Appeal No. 2001-1418
Application 08/022,822
Moreover, the originally filed disclosure does not
disclose a device comprising these new limitations.
The only device described in the originally filed
disclosure comprised a manifold having apices wherein
the distance between the apices decreases to the same
degree as the width of the flow channels upon
pressurization of the device [answer, pages 3 and 4].
Based on the foregoing, it appears that the examiner
considers the appellant’s specification to be lacking with
respect to both the enablement and written description
requirements of § 112, first paragraph. These two requirements
are, of course, separate and distinct. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991).
Insofar as enablement is concerned, the dispositive issue is
whether the appellant's disclosure, considering the level of
ordinary skill in the art as of the date of the appellant's
application, would have enabled a person of such skill to make
and use the appellant's invention without undue experimentation.
In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64
(CCPA 1982). In calling into question the enablement of the
appellant's disclosure, the examiner has the initial burden of
advancing acceptable reasoning inconsistent with enablement. Id.
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