Appeal No. 2001-0302
Application No. 08/635,614
§ 112 (rejection (b)), it is not altogether clear whether this
rejection is based on the enablement requirement or the written
description requirement found in the first paragraph of the
statute.4 We therefore shall evaluate the rejection in light of
both requirements.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of
literal support in the specification for the claim language. In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
On page 4 of the answer, the examiner states that the terms
“diametric direction” and “diametric deformation” in claim 1, and
the term “diametric movement” in claim 8, “are not defined in the
specification so as to convey to one of ordinary skill in the art
the meaning of such terms.” In addition, on pages 4-5 of the
answer, the examiner states that “[t]here is no basis in either
4
4The written description and enablement requirements are, of
course, separate and distinct. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
7
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