Appeal No. 2004-1259
Application No. 09/832,355
enablement in the first instance, we do not reach appellants’ evidence in support of
enablement.
Written Description
35 U.S.C. §112, ¶ 1 has been interpreted to require a written description
requirement separate and apart from the enablement requirement. See Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 [65 USPQ2d 1385] (Fed. Cir. 2003)
(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 [19 USPQ2d 1111] (Fed. Cir.
1991)) (holding construction of §112, ¶ 1 requires separate written description and
enablement requirements). In re Curtis, 354 F3d 1347, 69 USPQ2d 1274 (Fed. Cir.,
2004).
It is well-settled that the written description requirement of 35 U.S.C. § 112, first
paragraph, can be satisfied without express or explicit disclosure of a later-claimed
invention. See, e.g., In re Herschler, 591 F.2d 693, 700, 200 USPQ 711, 717 (CCPA
1979): “The claimed subject matter need not be described in haec verba to satisfy the
description requirement. It is not necessary that the application describe the claim
limitations exactly, but only so clearly that one having ordinary skill in the pertinent art
would recognize from the disclosure that appellants invented processes including those
limitations.” (citations omitted). See also Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000) (“In order to satisfy the
written description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”).
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