Appeal No. 1998-1711 Page 9
Application No. 08/506,387
For the foregoing reasons, we conclude that the examiner's rejection under 35 U.S.C. §
112, first paragraph, is not sustainable on the basis that the appellants' specification fails to
provide an enabling disclosure of the subject matter of claims 4-7.
The description requirement found in the first paragraph of 35 U.S.C. § 1l2 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
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.
The examiner points to the coolant fluid expansion chamber (claim 4) and the hydraulic
braking circuit (claims 5 and 6) and pressurized fluid accumulator (claim 7) as not being
described in the specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventors, at the time the application was filed, had possession of the
claimed invention. Initially, we note that the appellants' original specification, on page 8,
discloses that the large reservoir 32 includes: in the embodiment shown in Figure 6, a
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