Appeal No. 1999-0956
Application No. 08/584,084
The 35 U.S.C. § 112, first paragraph, rejection
In rejecting the appealed claims under 35 U.S.C. § 112,
first paragraph, the examiner states (answer, page 2):
. . . [The claims are] based on a disclosure which is not
enabling and does not comply with the written description
requirement. The following is critical or essential to the
practice of the invention, but not included in the claim(s).
. . [Thus, the claims are] not enabled nor adequately
described by the disclosure. See In re Mayhew, 527 F.2d
1229, 188 USPQ 356 (CCPA 1976).
The enablement and written description requirements of 35
U.S.C. § 112, first paragraph, are separate and distinct. Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991). In the present instance, the examiner’s
rejection is based, at least in part, on both the enablement and
written description requirements of the statute. We shall
therefore consider both requirements in reviewing this rejection.
Insofar as the enablement requirement 35 U.S.C. § 112 is
concerned, the dispositive issue is whether appellants’
disclosure, considering the level of ordinary skill in the art as
of the date of appellants’ application, would have enabled a
person of such skill to make and use the claimed invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). As to the written
description requirement, the test for determining compliance
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