Appeal No. 2002-1411
Application No. 09/144,535
necessarily remain self-aligned. Examiner’s answer, page 11
(noting e.g., that doped regions 100, 102 are no longer self-
aligned to the recess after heating).
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession of the later claimed subject
matter at the time of the invention, rather than the presence or
absence of literal support in the specification for the claim
language. See, Vas-Cath Inc. V. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-117 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). As
explained by the court in Vas-Cath, 935 F.2d at 1563-64, 19
USPQ2d at 1117:
35 U.S.C. § 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
a “written description of an invention” required by
§ 112, first paragraph.
In the present case, we are in agreement with appellant that
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