Appeal No. 2002-2110 Page 4
Application No. 09/224,748
pre-existing material is activated as recited in independent claim 17 at line 4, there is no
tracer which has had an opportunity to react differently to different regions of the
surface." (Id.) He adds, "[a] pre-existing material has no chance to react differently to
different regions since it is a material which is already a part of the surface
(specification page 6, lines 7 and 8) by various known methods of assembly and
manufacture which do not include different reactivity between the surface and the pre-
existing material as a part thereof." (Id.) The appellants argue, "the Appellants'
specification and original claims clearly establish[] support for the subject matter of
Claim 17, as set forth on page 3, lines 22-23, and page 6, lines 7-8, along with original
Claims 3,14." (Appeal Br. at 6.)
The first paragraph of § 112 follows.
The specification shall contain a written description of the invention, and
of the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and
use the same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.
(Emphases added.) More specifically, the paragraph "requires a 'written description of
the invention' which is separate and distinct from the enablement requirement."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). See also Lance Leonard Barry, A Picture is Worth a Thousand Words: Vas-
Cath, Inc. v. Mahurkar, 76 J. Pat. & Trademark Off. Soc'y 5 (1994) (explaining and
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