Appeal No. 1995-4405
Application No. 08/083,680
support or lack of enablement. Our reviewing court has made it clear that written description and
enablement are separate requirements under 35 U.S.C. § 112, first paragraph. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). Therefore, we will
treat these issues separately.
A specification complies with the description requirement of 35 U.S.C. § 112, first paragraph,
if it conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, the
inventor was in possession of the invention. The content of the drawings may also be considered in
considering compliance with the written description requirement. Id. The examiner has the initial
burden of establishing a prima facie case of lack of an adequate written description. In re Wertheim,
541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976).
Here, Fig. 3 of the drawings and the specification (page 4, lines 14-22; page 8, lines 7-12;
page 14, lines 11-24) disclose controlling the partial pressure of a gas (pCO ) over a range of
2
temperatures by a reservoir (based on pH differences) to provide either a constant or variable gas
concentration. The examiner has not explained, and it is not apparent, why this disclosure would not
have conveyed to one of ordinary skill in the art that as of appellants’ filing date, appellants were in
possession of a method and system wherein the concentration of a gas of interest in a reference medium
is controlled such that the concentration of the gas in the reference medium varies as a function of
temperature over a selected temperature range as recited in appellants’ claims. Moreover, the
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