Appeal No. 1998-1386 Page 7
Application No. 08/269,156
• written description and enablement of claims 1, 6-9,
12, 14, 15, 17, and 21
• anticipation of claims 1, 6, 8, 12, 14-17, and 21 by
Fujisaki
• obviousness of claim 9 over Fujisaki in view of
Guyon
• anticipation of claims 1, 6, and 9 by Hullender.
Written Description and Enablement of Claims 1,
6-9, 12, 14, 15, 17, and 21
The examiner’s explanation of an arguments about the
rejection of claims 1, 6-9, 12, 14, 15, 17, and 21 under
35 U.S.C. § 112 confuses the written description and
enablement requirements of the statute. By way of
clarification, we note the following principles from Vas-Cath,
Inc. v. Mahurkar,
935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
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.
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