Appeal No. 96-4022
Application 08/197,011
1111, 1114-17 (Fed. Cir. 1991) and In re Barker, 559 F.2d 588,
591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, sub. nom,
Barker v. Parker, 434 U.S. 1238 (1978). With respect to the
description requirement, the court in Vas-Cath Inc. v. Mahurkar
at 935 F.2d 1563-64, 19 USPQ2d 1127 stated:
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 the
"written description of the invention" required by
§ 112, first paragraph.
Moreover, as the court set forth in Barker 559 F.2d at 593,
194 USPQ at 472, in quoting with approval from In re Winkhaus,
527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975):
“That a person skilled in the art might realize from reading the
disclosure that such a step is possible is not a sufficient
indication to that person that the step is part of appellants’
invention.”
Here, there is no descriptive support in the appellants’
original disclosure for the limitations appearing in the
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