Appeal No. 2000-1747
Application No. 08/784,237
OPINION
A. The Rejections under 35 U.S.C. § 112, first paragraph
The examiner separately rejects all of the claims on
appeal for failure to meet the requirements of the written
description requirement and failure to meet the requirements
of the enablement requirement (see the Answer, page 7). The
written description and enablement requirements of § 112 are
separate and distinct. See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991). As recognized by the
examiner (Answer, page 7), the written description requirement
of § 112 requires that the applicant must convey with
reasonable clarity to those skilled in the art that, as of the
filing date sought, applicant was in possession of the
invention as now claimed. See Vas-Cath Inc., 935 at 1563, 19
USPQ2d at 1117. The initial burden of proof rests with the
examiner in establishing that appellant has not met the
written description requirement. See In re Alton, 76 F.3d
1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). However,
we determine that the examiner has not met this burden merely
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