Appeal No. 2005-1264 Page 3
Application No. 09/682,594
Claims 35 and 37-39 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Aftanas in view of Parkins.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the final
rejection (mailed October 21, 2003) and answer (mailed June 16, 2004)) for the
examiner's complete reasoning in support of the rejections and to the brief (filed April
12, 2004) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, to the
declaration of Le Nguyen (the Nguyen declaration), a copy of which was appended to
the appeal brief, and to the respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the determinations which follow.
We turn our attention first to the rejection of claims 35 and 37-39 under the first
paragraph of 35 U.S.C. § 112. We initially observe that the description requirement
found in the first paragraph of 35 U.S.C. § 112 is separate from the enablement
requirement of that provision. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560-64,
19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and In re Barker, 559 F.2d 588, 591, 194
USPQ 470, 472 (CCPA 1977), cert. denied, 434 U.S. 1238 (1978). With respect to
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