Appeal No. 2004-1433
Application No. 09/639,303
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.
The written description requirement generally comes into play
after an amendment to the claims. However, the examiner has not
pointed to any claim limitation that was added by amendment and
considered to be new matter. In fact, all of the limitations
discussed by the examiner were in the original set of claims and
disclosed, for example, at page 18 of the specification.
Consequently, we find no basis for the examiner’s assertion of an
inadequate written description.
As to the enablement part of 35 U.S.C. § 112, first
paragraph, the examiner has not met the standard set forth in
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988) for determining enablement. In particular, we find that
each of the eight Wands factors, 1) the breadth of the claims,
2) the nature of the invention, 3) the state of the prior art,
4) the level of one of ordinary skill, 5) the level of
predictability in the art, 6) the amount of direction provided by
the inventor, 7) the existence of working examples, and 8) the
quantity of experimentation needed to make or use the invention
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007