Appeal No. 2003-0208 Page 4
Application No. 08/578,996
The written description rejection
We will not sustain the rejection of claims 3, 6, 8 and 10 under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the relevant art
that the appellants, at the time the application was filed, had possession of the claimed
invention.3
The written description requirement serves "to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him; how the specification accomplishes this is not material." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
written description requirement, the appellants does not have to utilize any particular
form of disclosure to describe the subject matter claimed, but "the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989). Put another way, "the applicant must . . . 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
3 The description requirement exists in the first paragraph of 35 U.S.C. § 112 independent of the
enablement (how to make and how to use) requirement and the description and enablement requirements
are separate and distinct from one another and have different tests. See In re Wilder, 736 F.2d 1516,
1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985); In re Barker, 559 F.2d
588, 591, 194 USPQ 470, 472 (CCPA 1977); and In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236,
239 (CCPA 1971).
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