Appeal No. 97-0755 Page 5
Application No. 08/400,066
The written description issue
We do not sustain the examiner's rejection of claims 11
and 13 through 18 under 35 U.S.C. § 112, first paragraph, as
failing to provide an adequate written description of the
invention.
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. The test for determining2
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 at that time of the later claimed subject matter,
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, 1116-17
2It is well settled that 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); 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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