Appeal No. 1998-2500
Application No. 08/276,154
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art reference, and to the respective
positions articulated by the appellants and the examiner. As a consequence of our review,
we make the determinations which follow.
35 U.S.C. § 112, FIRST PARAGRAPH
The examiner, instead of relying on the “written description" or "enablement" language
of the statute, has used the terminology "not supported" in the statement of the rejection. Our
reviewing court has made it clear that written description and enablement are separate
requirements under the first paragraph of 35 U.S.C. § 112. Vas-Cath Inc. v. Mahurkar, 935
F. 2d 1555, 1560, 19 USPQ 2d 1111, 1114 (Fed. Cir. 1991). The terminology "lack of
support" has also been held to imply a reliance on the written description requirement of the
statute. In re Higbee and Jasper, 527 F. 2d 1405, 1406, 188 USPQ 488, 489 (CCPA
1976).
In view of the factual situation presented to us in this instance, we will interpret the
Examiner's basis for the 35 U.S.C. § 112, first paragraph, rejection as reliance on the "written
description" portion of the statute. "The function of the description requirement [of
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