Appeal No. 1997-2510
Application No. 07/868,539
appellant would argue that written description is separate from enablement,
when there is inadequate written description, there is no enablement (i.e., what is
not described is not enabled).”
Throughout the body of his rejection and response to appellant’s
arguments, the examiner commingles the written description and enablement
provisions of 35 U.S.C. § 112, first paragraph. At no point, on this record, does
the examiner clearly address the issue of written description, separately from the
issue of enablement.
The written description provision is separate and distinct from the
enablement requirement. Vas-Cath, 935 F.2d at 1560, 19 USPQ2d at 1114. 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)).
7 Lest there be any misunderstanding, the term “vacate” in this context means to
set aside or to void. When the Board vacates an examiner’s rejection, the
rejection is set aside and no longer exists.
6
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