Appeal No. 2001-0931 Page 4
Application No. 09/104,476
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, page 3), claim 3 is “not described in
the specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventors [sic] … had possession of the claimed invention.”
We understand the examiner’s statement of the rejection to be one of written
description. The examiner finds (Answer, page 4), “[c]laim 3 has been amended
to include the limitation of the pore size is larger than 0 microns. The
specification teaches at several locations the pore size may be 250-1200
microns.” We note the examiner’s failure to identify where the specification
discloses, “the pore size may be 250-1200 microns.”
However, in responding to appellants’ arguments (Answer, page 8) the
examiner states “[i]t is the examiner’s position that the specification is not
enabling for any pore size and that the pore size may be a point of criticality of
the invention which requires specific enablement and/or written description.
Further, the function of the test strip is highly dependent upon the pore size.”
Notwithstanding the examiner’s inclusion of the term “written description” in his
argument, the issues raised by the examiner are clearly those of “enablement”
and not “written description.” As set forth in Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561, 19 USPQ2d 1111, 1115 (CAFC 1991), “[w]ith respect to the first
paragraph of §112 the severability of its “written description” provision from its
enablement (“make and use”) provision was recognized by this court’s
predecessor, the Court of Customs and Patent Appeals, as early as In re
Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967).”
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007