Appeal No. 1999-0445
Application No. 08/351,583
operation of the compressing means when the value of the calculated rate of change is larger
than a predetermined value (i.e., situation c) described above).7
In light of the foregoing, we conclude that the examiner has not met the initial burden of
advancing acceptable reasoning inconsistent with enablement of the claimed subject matter.
Accordingly, we cannot sustain the examiner's rejection of the claims under the first paragraph
of 35 U.S.C. § 112 on the basis that the specification fails to teach one of ordinary skill in the
art how to make and use the invention.
The Written Description Requirement
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.
7It is of some interest that the examiner, appropriately in our opinion, has not asserted that the further
limitation recited in claim 10 is in any way inconsistent with the language in the final paragraph of claim 1.
6
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