Appeal No. 2001-2584 Page 4
Application No. 08/462,817
As the examiner develops his argument on pages 3-8 of the Answer, he
blurs the distinction between the written description and enablement provisions
of 35 U.S.C. § 112, first paragraph. By blurring the issues the examiner has
introduced substantial confusion into this record. For example, in response to
the examiner’s position appellants argue that (Brief, page 8) “the [e]xaminer’s
reliance on … [University of California v. Eli Lilly and Co., 119 F.3d 1559, 43
USPQ2d 1398 Fed. Cir. 1997] to support his assertion of non-enablement is
erroneous [because] … the key issue addressed by the Federal Circuit [in Lilly]
was the issue of written description.” In response, the examiner states (Answer,
page 9):
The rejection was originally articulated in section 3 of Paper
Number 6, where it was stated that the “[]specification does not
provide an adequate written description and an enabling
disclosure” for the claimed invention. Therefore, the reliance upon
the decision from UC v. Lilly in support of the instant rejection is
perfectly proper.
However, in contrast to what the rejection may have been in Paper No. 6,
the rejection presented to this Merits Panel is one of enablement. 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 13 14 15 Next
Last modified: November 3, 2007