Appeal No. 97-1871
Application 08/325,847
the rejection as though the basis were a lack of written description, which is a separate statutory
requirement. Thus, on pages 7 to 9 and 18 of the brief, appellant argues the rejection in terms of new
matter or lack of support, both of which concern the written description requirement of § 112, first
paragraph, see In re Higbee, 527 F.2d 1405, 1406 , 188 USPQ 488, 489 (CCPA 1976), and cites
cases relating thereto (e.g., In re Herschler, 591 F.2d 693, 701, 200 USPQ 711, 717 (CCPA 1979),
cited on page 8 of the brief). Likewise, the examiner's arguments on pages 8 and 9 of the answer
concern the question of lack of support. We will therefore treat the rejection under § 112, first
paragraph, as having included the ground of non-compliance with the written description requirement.
In order to comply with the written description requirement, appellant's application, as filed,
"must contain sufficient disclosure, expressly or inherently, to make it clear to persons skilled in the art
that appellant possessed the subject matter claimed." In re Mott, 539 F.2d 1291, 1297, 190 USPQ
536, 541 (CCPA 1976). This requirement is separate and distinct from that of enablement. Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Barker,
559 F.2d 588, 593, 194 USPQ 470, 474 (Fed. Cir. 1977), cert. denied, 434 U.S. 1064 (1978).
Considering first the range recited in claim 1, the end points of that range, about 0.15 to about 0.29, are
inherently described in the application as filed, since they are calculable from the values given in
Examples 2 and 3, respectively. However, we do not consider that this disclosure would convey to
one of ordinary skill that appellant had invented a method in which the ratio range would be within the
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