Appeal No. 95-3455
Application 07/945,902
patent application must comply with the requirements of 35
U.S.C. 112, first paragraph, if the later filed U.S.
application claiming the same invention as in the foreign
application is to be accorded benefit under 35 U.S.C. § 119.
In re Gostelli, 872 F.2d 1008, 1011, 10 USPQ2d 1614, 1616
(Fed. Cir. 1989); Vogel v. Jones, 486 F.2d 1068, 1075, 179
USPQ 425, 431 (CCPA 1973); Kawai v. Metlesics, 480 F.2d 880,
887-89, 178 USPQ 158, 164-65 (CCPA 1973). The written
description requirement of 35 U.S.C. 112, first paragraph, is
separate from the enablement requirement found in the same
provision of 35 U.S.C. 112. In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984).
While appellants have filed the certified copy of their
priority application required by 35 U.S.C. § 119(b), they have
not supplied a sworn translation of the document which the
statute also permits the Commissioner of Patents and
Trademarks to require. See also 37 C.F.R. § 1.55(a), last
sentence. Suffice it to say that without the translation, it
is impossible to determine if the foreign application complies
with the requirements of 35 U.S.C. § 112. Accordingly, on
this record, we have not accorded appellants the benefit of
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