Appeal No. 1997-3392
Application 08/297,946
establishing a prima facie case of nonenablement. We
therefore reverse the examiner’s rejection under 35 U.S.C.
§ 112, enablement requirement.
Rejection under 35 U.S.C. § 112,
first paragraph, written description requirement
In order for the appellants’ specification to provide
written descriptive support for the invention presently
claimed, all that is required is that it reasonably convey to
one of ordinary skill in the art that as of the filing date of
the application, the appellants were in possession of the
presently-claimed invention; how the specification
accomplishes this is not material. See In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Edwards, 568 F.2d 1349, 1351-2, 196 USPQ 465, 467 (CCPA 1978);
In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976). It is not necessary that the application describe the
presently-claimed invention exactly, but only sufficiently
clearly that one of ordinary skill in the art would recognize
from the disclosure that the appellants invented it. See
Edwards, 568 F.2d at 1351-2, 196 USPQ at 467; Wertheim, 541
F.2d at 262, 191 USPQ at 96. “[T]he PTO has the initial
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