Appeal No. 2002-1035 Page 4
Application No. 09/333,166
for the limitation in claim 6 “a maximum depth at least one-half of the radius.”
Appellants rely on the illustration in Figure 16 of the application for support for this
claimed feature (see brief, pages 5-6 and Appendix B to the brief).
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). As the court stated in Vas-Cath, 935 F.2d at 1563-64,
19 USPQ2d at 1117:
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.
In this case, while we agree with appellants that Figure 16 appears to illustrate a
flute depth of greater than one-half the radius of the anchor portion, this illustration of a
single ratio of the depth of the flutes to the radius of the anchor portion falling within the
claimed range is insufficient to provide support for the entire range of “at least one-half
of the radius” now recited in claim 6, which is an open-ended range from a minimum of
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