Appeal No. 1999-2027
Application No. 08/452,500
We have carefully considered the claim, the applied prior
art reference, and the respective positions articulated by
appellants and the examiner. As a consequence of our review,
we will reverse both the written description/enablement
rejection and also the anticipation rejection of claim 1.
The examiner first rejects claim 1 as being based on a
specification that "fail[s] to provide an adequate written
description of his invention, and fail[s] to adequately teach
how to make and/or use the invention" (see Paper No. 37, page
2). The examiner points to several grammatical errors in the
specification and concludes (Paper No. 37, page 5) that "[a]
person of ordinary skill in the art would be burdened by
unreasonable experimentation and delay in trying to construct
the invention based on the present disclosure."
According to Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563/64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991),
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
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