Appeal No. 98-1538
Application No. 08/698,470
v. Mahurkar, 935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17
(Fed. Cir. 1991) and In re Barker, 559 F.2d 588, 591, 194 USPQ
470, 472 (CCPA 1977), cert. denied, 434 U.S. 1238 (1978).
With respect to the description requirement, the court in Vas-
Cath, Inc. v. Mahurkar at 935 F.2d 1563-64, 19 USPQ2d 1117
stated:
35 U.S.C. § 112, first paragraph, requires a
"written description of the invention" which is
separate and 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.
Here, the claims recite that the thickness of rear plane
(claim 32) or rear heel section (claim 33) is "less than the
substantially constant thickness" of the forward plane (claim
32) or forward toe section (claim 33). The appellants'
original disclosure, however, states that:
The lower surface 19 is further divided into a rear
plane 27 and a forward plane 29. The wedge 15
increases in thickness forwardly from the rear
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