Appeal No. 1998-0607 Page 11
Application No. 08/506,857
the prior art discloses several different means to make a retractable mirror, but finds the
appellants' disclosure deficient, in that it does not indicate which of the many known types of
articulation/retraction is employed in the appellants' invention.
In light of the above discussion, we conclude that one of ordinary skill in the art would
have known, from the prior art, how to construct a device which articulates and retracts the
appellants' rear view mirror, even without the disclosure of a particular embodiment thereof by
the appellants. This is true whether "articulating" and "articulating to enable the mirror to be
retracted" as used by the appellants require pivoting, pivoting in combination with linear
extension or linear extension alone. In short, the examiner has not met the burden of7
advancing acceptable reasoning inconsistent with enablement in this instance.
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, Inc. v. Mahurkar, 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
7Note our discussion of this issue in our affirmance of the 35 U.S.C. § 112, second paragraph, rejection of
claims 4 and 5, supra.
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