Appeal No. 1998-2884
Application No. 08/495,960
statute, has used the terminology “lack of support” 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 USPQ2d
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 the first paragraph of 35 U.S.C.
§ 112] is to ensure that the inventor has possession, as of
the filing date of the application relied on, of the specific
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