Appeal No. 95-0175
Application 07/894,147
the amount of necessary experimentation is undue. In re Vaeck,
947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
Here, the examiner has made no explanation whatsoever as to
what experimentation would be required by one with ordinary skill
in the art in order to make and use the claimed invention, and
also no explanation as to why any such experimentation would be
undue. Accordingly, the rejection of the claims as being based
on unenabling disclosure cannot be sustained.
It appears, however, that the examiner intended to reject
the claims as being without written description support in the
specification. The written description requirement is also a
requirement of 35 U.S.C. § 112, first paragraph. But it is
separate and apart from the enabling disclosure requirement.
In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir.
1984). The purpose of the written description requirement is
broader than to merely explain how to make and use the claimed
invention. Rather, the applicant must also 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, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375,
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