Appeal No. 2004-0676
Application No. 09/562,686
We initially note that the written description requirement
found in the first paragraph of 35 U.S.C. § 1l2 is separate from
the enablement requirement of that provision. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561-63, 19 USPQ2d 1111, 1115-17 (Fed.
Cir. 1991); In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472
(CCPA 1977), cert. denied, 434 U.S. 1064 (1978). As the court
stated in In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of
the later claimed subject matter, rather than the
presence or absence of literal support in the
specification for the claimed language. (citations
omitted)
The fact that one skilled in the art might realize from reading a
disclosure that something is possible is not a sufficient
indication to that person that the something is a part of an
appellant's disclosure. See Barker, 559 F.2d at 593, 194 USPQ at
474. Precisely how close the original description must be to the
claimed subject matter to comply with the written description
requirement must be determined on a case-by-case basis.
In the present case, there is no dispute that the claim
limitation “a vacuum of no more than 10-3 mbar” embraces a pressure
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