Appeal No. 97-0972
Application 08/399,571
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.
Although the claimed invention does not necessarily have to be
expressed in ipsis verbus in order to satisfy the description
requirement (see In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90,
98 (CCPA 1976)), the mere fact one skilled in the art might
realize from reading a disclosure that something is possible is
not a sufficient indication to that person that the something is
a part of an appellant's disclosure. See Barker, 559 F.2d at
593, 194 USPQ at 474. Precisely how close the original
description must come to comply with the description requirement
must be determined on a case-by-case basis. The primary
consideration is factual and depends on the nature of the
invention and the amount of knowledge imparted to those skilled
in the art by the disclosure. See Vas-Cath Inc. v. Mahurkar,
supra.
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