Appeal No. 2002-0033 Page 4
Application No. 09/372,020
It 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). Since the rejection under
appeal appears to be based upon both the description and enablement requirements
we will review each requirement separately.
The written description requirement
As set forth above, the examiner determined that the written description
requirement had not been complied with since the claims under appeal have been
broadened by the omission of the limitation that the prismatic portion is provided on the
exterior surface. The examiner, citing Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473, 45 USPQ2d 1498 (Fed. Cir. 1998) and other cases, stated that a claim which
omits matter disclosed to be essential to the invention as described in the specification
is subject to rejection under 35 U.S.C. 112, first paragraph.
The appellants argue (brief, pp. 4-5; reply brief, pp. 1-3) that the examiner has
misapplied Gentry Gallery and the other cited cases since a claim may be broader than
the specific embodiment disclosed in the specification and the specification of the
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