Appeal No. 95-2245
Application No. 08,011,563
claims 1, 3, 4 and 6 through 12 under 35 U.S.C. § 112, second
paragraph.
Description Requirement
The description requirement found in the first paragraph
of 35 U.S.C. § 112 is separate from the enablement requirement
of that provision. See In re Wilder, 736 F.2d 1516, 222 USPQ
369 (Fed. Cir. 1984); In re Barker, 559 F.2d 588, 194 USPQ 470
(CCPA 1977), cert. denied, sub. nom, Barker v. Parker, 434
U.S. 1238 (1978). Moreover, as the court stated in In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983):
The test for determining 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 claimed
language.
The language in original claims must also be taken into
consideration in determining compliance with the written
description requirement. See In re Smith, 481 F.2d 910, 914,
178 USPQ 620, 624 (CCPA 1973); In re Gardner, 475 F.2d 1389,
1391, 177 USPQ 396, 397 (CCPA 1973). In other words, the
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