Appeal No. 1995-2789
Application No. 07/788,114
The written description provision is separate and distinct from the
enablement requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560,
19 USPQ2d 1111, 1114 (CAFC 1991). To satisfy the written description
requirement, a patent specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, 935 F.2d at 1563,
19 USPQ2d at 1116. The enablement requirement of 35 U.S.C. § 112, first
paragraph, requires that the patent specification enable “those skilled in the art
to make and use the full scope of the claimed invention without ‘undue
experimentation.’” Genentech, Inc. v. Novo Nordisk. A/S, 108 F.3d at 1365, 42
USPQ2d at 1004 (quoting In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993)).
While, the examiner recognizes (Answer, page 13) the distinction between
the written description provision and the enablement provision of 35 U.S.C. §
112, first paragraph, the examiner’s subsequent arguments blend the two
requirements back together. Accordingly we will separately review this rejection
under the written description and the enablement provisions of 35 U.S.C. § 112,
first paragraph.
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