Appeal No. 1998-2011
Application No. 08/707,267
all of the bight widths be generally the same as one another or, alternatively, that the leg widths
be generally the same as the bight widths. For these reasons, one of ordinary skill in the art
would not be able to ascertain the metes and bounds of the invention of independent claim 1
with the precision required by the second paragraph of 35 U.S.C. § 112. Claims 2, 3, 7 and
9-11 depend from claim 1 and thus are likewise indefinite.
Claims 1-3, 7 and 9-11 are rejected under 35 U.S.C. § 112, first paragraph, as being
based upon an original disclosure which fails to provide descriptive support for the subject
matter now being claimed.
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.
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