Appeal No. 2001-2671 Page 5
Application No. 09/258,155
examiner. As a consequence of our review, we make the
determinations which follow.
The rejection under 35 U.S.C. § 112, first paragraph
We will not sustain the rejection of claims 1, 3 to 5 and
7 under 35 U.S.C. § 112, first paragraph.
The description requirement exists in the first paragraph
of 35 U.S.C. § 112 independent of the enablement (how to make
and how to use) requirement. The examiner has asserted2
(final rejection, pp. 2-3) that the claims under appeal fail
to meet both the description requirement and the enablement
requirement.
2It is well settled that the description and enablement
requirements are separate and distinct from one another and
have different tests. See In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S.
1209 (1985); In re Barker, 559 F.2d 588, 591, 194 USPQ 470,
472 (CCPA 1977); and In re Moore, 439 F.2d 1232, 1235-36, 169
USPQ 236, 239 (CCPA 1971).
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