Appeal No. 96-3407
Application 08/325,549
first paragraph, as being based upon an original disclosure
which fails to provide support for the subject matter now
being claimed. We initially observe that the description
requirement found in the first paragraph of 35 U.S.C. § 1l2 is
separate from the enablement requirement of that provision.
See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560-64, 19
USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and In re Barker, 559
F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied,
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 1117 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 in In re Barker, supra, set forth 559
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