Appeal No. 1997-1373
Application No. 08/478,811
It is our view, after consideration of the record before
us, that Appellant’s specification in this application describes
the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. Accordingly, we reverse.
In the statement of the grounds of rejection, the Examiner
asserts a failure “... to provide an adequate written
description of the invention.” (Answer, page 3). It is
apparent, however, from the Examiner’s line of reasoning and
arguments that the Examiner is actually alleging a failure by
Appellant to provide an enabling disclosure. Accordingly, we1
will direct our discussion primarily to the merits of the
Examiner’s position as to the enabling nature of Appellant’s
disclosure. We point out, however, that our review of
Appellant’s specification and drawing figures reveals a detailed
description of the construction of the mathematical model as an
analogy to a heat bath, as well as the procedures involved in
arriving at an acceptable particle interaction energy to develop
a corresponding base station channel allocation with an
1Our reviewing court has made it clear that written description and
enablement are separate requirements under the first paragraph of 35 U.S.C.
§ 112. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114
(Fed. Cir. 1991).
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