Appeal No. 1997-4145
Application No. 08/361,328
requirement" (brief, p. 9). It is unclear whether the rejection and rebuttal are based on
lack of written descriptive support and/or lack of enablement.
"Satisfaction of the description requirement insures that subject matter presented
in the form of a claim subsequent to the filing date of the application was sufficiently
disclosed at the time of filing so that the prima facie date of invention can fairly be held
to be the filing date of the application." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1562, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991) (quoting In re Smith, 481 F.2d 910, 914,
178 USPQ 620, 623-24 (CCPA 1973)). "[L]ack of literal support ... is not enough ... to
support a rejection under § 112." See In re Wertheim, 541 F.2d 257, 265, 191 USPQ
90, 98 (CCPA 1976). The test is whether the disclosure of the application relied upon
reasonably conveys to a person skilled in the art that the inventor had possession of the
claimed subject matter at the time of the earlier filing date. Ralston Purina Co. v. Far-
Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985).
In Ralston Purina Co., the Federal Circuit stressed that compliance with the
description requirement "must be determined on a case-by-case basis" and rejected the
argument of the accused infringer that "several range cases [support the proposition]
that ranges found in the applicant's claim language must correspond exactly to ranges
disclosed in the parent."
The facts in these cases precluded a determination that one skilled in the
art could derive the claim limitations from the parent, due to a number of
different factors, e.g. the unpredictable nature of the art, In re Sichert, 566
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