Appeal No. 1997-2510
Application No. 07/868,539
By addressing the written description and enablement provisions of 35
U.S.C. § 112, first paragraph together, the examiner failed to focus on the
requirements of either provision. Thus, the rejection is not susceptible to a
meaningful review. Accordingly, we vacate the examiner’s rejection and remand
the application. Upon receipt of the application, the examiner should step back
and reconsider the issue of written description separately from the issue of
enablement. If, the examiner believes that a rejection under the written
description provision or the enablement provision is necessary, the examiner
should issue an appropriate office action, that clearly sets forth the factual basis
for the rejection. In the event the examiner finds that a rejection under the
written description provision and the enablement provision is required, the
examiner should issue an appropriate Office Action, separately addressing, and
clearly setting forth the factual basis for each rejection.
While we take no position on the merits of the examiner’s rejection. We
offer the following guidance, and make the following observations, to assist the
examiner’s in his reconsideration of this record.
A. Written Description:
As set forth in Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323, 56
USPQ2d 1481, 1483 (Fed. Cir. 2000) the written description “inquiry is a factual
one and must be assessed on a case-by-case basis.” Furthermore, “the PTO
has the initial burden of presenting evidence or reasons why persons skilled in
the art would not recognize in the disclosure a description of the invention
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