Appeal No. 97-0082
Application No. 07/993,718
(1978). 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 the
"written description of the invention" required by
§ 112, first paragraph.
When viewed in this context it is readily apparent from the
examiner’s comments that, although the examiner states that “the
disclosure is not enabling for . . .,” the rejection is in
reality based upon failure to comply with the description
requirement of the first paragraph of § 112 (i.e., that the
appellants were not in possession of the claimed subject matter
at the time of filing of the application) rather than failure to
comply with the enablement requirement of that provision (i.e.,
that the appellants’ disclosure failed to adequately teach how to
“make and use” the claimed invention).
Apparently recognizing that the rejection is based upon a
lack of descriptive support, the appellants argue that they
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