Appeal No. 1998-0246
Application No. 08/397,536
We initially observe that the description requirement found in the first paragraph of 35
U.S.C. § 112 is separate from the enablement requirement of that provision. See Vas-Cath,
Inc. 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, 935 F.2d at
1563-64, 19 USPQ2d at 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.
With these authorities in mind, we have carefully reviewed the original disclosure2 and
fail to find descriptive support for the limitations presently recited in claims 19 and 20 that the
sealing of the first and second continuous webs along two sides of the cut web product is
conducted at a first sealing station and the sealing of the first and second continuous webs along
the remaining two sides of the cut web product is conducted at a second sealing station.
2 A review of this application, which was filed March 2, 1995, reveals that it is a continuation of
Application No. 07/943,373, filed September 10, 1992, which is a continuation of Application No. 07/725,209, filed
July 3, 1991, which in turn is a continuation of Application No. 07/417,285, filed October 5, 1989. The above-noted
limitations of claims 19 and 20 were presented for the first time in a preliminary amendment filed March 27, 1995
(Paper No. 29).
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