Appeal No. 1997-3441
Application No. 08/614,920
statute, the Examiner’s arguments are limited to Appellants’
alleged failure to provide an enabling disclosure. 3
Accordingly, we will direct our discussion to the merits of the
Examiner’s position as to the enabling nature of Appellants’
disclosure. We point out, however, that our review of
Appellants’ specification and drawing figures which describe the
claimed silicon carbide (SiC) integrated circuit unquestionably
reveals compliance with the statutory “written description”
requirement, i.e. Appellants were clearly in possession of the
invention at the time of filing of the application.
As to the Examiner’s rejection of the appealed claims for
“lack of enablement”, we note that, in order to comply with the
enablement provision of 35 U.S.C. § 112, first paragraph, the
disclosure must adequately describe the claimed invention so
that the artisan could practice it without undue
experimentation.
3Our reviewing court has made it clear that written
description and enablement are separate requirements under the
first paragraph of 35 U.S.C. § 112. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir.
1991). The terminology “lack of support” has also been held
to imply a reliance on the written description requirement of
the statute. In re Higbee and Jasper, 527 F.2d 1405, 1406 188
USPQ 488, 489 (CCPA 1976).
7
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