Appeal No. 98-0605
Application 08/383,191
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 the
description requirement, the court in Vas-Cath, Inc. v.
Mahurkar at 935 F.2d 1563-64, 19 USPQ2d 1117 stated:
35 USC 112, first paragraph, requires a "written
description of the invention" which is separate and
distinct from the enablement requirement. The
purpose of the "written description" requirement is
broader than to merely explain how to "make and
use"; 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. The invention is, for purposes of
the "written description" inquiry, whatever is now
claimed.
. . . drawings alone may be
sufficient to provide the "written description of
the invention" required by § 112, first paragraph.
It is also well settled that the question of whether a
modification is an obvious variant of that which is originally
disclosed is irrelevant insofar as the written description
requirement is concerned. See, e.g., Lockwood v. American
Airlines Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997) and In re Wohnsiedler, 315 F.2d 934, 937, 137
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007