Appeal No. 2005-0489 Page 7
Application No. 10/144,987
REMAND TO THE EXAMINER
This application is remanded to the examiner, pursuant to our authority under 37
CFR § 41.50(a), to consider whether the present application, as originally filed, provides
written descriptive support for the subject matter of claims 28-32 in compliance with the
first paragraph of 35 U.S.C. § 112.
The 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) and In
re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434 U.S.
1064, 197 USPQ 271 (1978). Moreover, 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. The content of the drawings may also be
considered in determining compliance with the written
description requirement. (citations omitted)
Although the claimed invention does not necessarily have to be expressed in ipsis
verbus in order to satisfy the description requirement (see In re Wertheim, 541 F.2d
257, 265, 191 USPQ 90, 98 (CCPA 1976)), it is nonetheless necessary that the
disclosed apparatus inherently perform the functions now claimed (note In re Smythe,
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