Appeal No. 1997-2760
Application No. 08/302,133
necessary that the application describe the claim limitations
exactly, . . . but only so clearly that persons of ordinary
skill in the art will recognize from the disclosure that
appellants invented processes including those limitations."
Wertheim, 541 F.2d at 262, 191 USPQ at 96 citing In re Smythe,
480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973).
Furthermore, the Federal Circuit points out that "[i]t is not
necessary that the claimed subject matter be described
identically, but the disclosure originally filed must convey
to those skilled in the art that applicant had invented the
subject matter later claimed." In re Wilder, 736 F.2d 1516,
1520, 222 USPQ 369, 372
(Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985), citing
In re Kaslow, 707 F.2d 1366, 707 F.2d 1366, 1375, 217 USPQ
1089, 1096 (Fed. Cir. 1983).
We note initially that we find Appellants’ argument
(Brief, pages 5 and 6) that the present disclosure is
“enabling” to be misplaced. Our reviewing court has made it
clear that written description and enablement are separate
requirements under the first paragraph of 35 U.S.C. § 112.
Vas-Cath Inc. v. Mahurkar, 935 F. 2d 1555, 1560, 19 USPQ 2d
6
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