Appeal No. 1997-2510
Application No. 07/868,539
In reaching our decision in this appeal, we considered appellant’s
specification and claims, in addition to the respective positions articulated by the
appellant and the examiner. We make reference to the examiner’s Answer3, and
the examiner’s Supplemental Answer4 in response to appellant’s Reply Brief5, for
the examiner’s reasoning in support of the rejections. We further reference
appellant’s Brief6, and appellant’s Reply Brief for appellant’s arguments in favor
of patentability.
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
For the reasons set forth below, we have determined that the rejection
under 35 U.S.C. § 112, first paragraph is not based upon the correct legal
standards. Accordingly we vacate7 the rejection under 35 U.S.C. § 112, first
paragraph, and remand the application to the examiner to consider the following
issues and take appropriate action.
I. The severability of the “written description” provision from the enablement
provision of 35 U.S.C. §112, first paragraph:
Appellant explains (Brief, page 20) “[t]he written description requirement is
separate and distinct from the enablement requirement.” See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114
(CAFC 1991). However, the examiner argues (Answer, page 18) “[w]hile
3 Paper No. 29, mailed August 8, 1996.
4 Paper No. 31, mailed December 10, 1996.
5 Paper No. 30, received October 15, 1996.
6 Paper No. 28, received May 17, 1996.
5
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