Appeal No. 2005-0215
Application No. 09/666,301
The examiner has set forth the following generic grounds for
rejecting claims 7, 9 and 10 for lack of written description as
well as lack of enablement under the first paragraph of 35 U.S.C.
§ 112:
Regarding claims 7 and 9, the original
specification does not teach a method of switching a
charge well based on a rate at which moving charges
fill a charge well, specifically a method of
determining said rate, and a method of determining the
proper time for switching.
Regarding claim 10, the original specification
does not teach a method of varying an integration
capacitance based on a rate at which moving charges
fill a charge well, specifically a method of
determining said rate, and a method of determining the
proper capacitance variation. [Answer, pp. 3-4.]
At the outset, we note that the written description
requirement of the first paragraph of 35 U.S.C. § 112 is separate
and distinct from the enablement requirement of the first
paragraph of 35 U.S.C. § 112. In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209
(1985). Under the written description portion of the first
paragraph of 35 U.S.C. § 112, the applicant must convey with
reasonable clarity to those skilled in the art that, as of the
filing date sought, he or she was in possession of the invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1116-17, (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366,
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