Appeal No. 2005-1264 Page 4
Application No. 09/682,594
the description requirement, the court in Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563-
64, 19 USPQ2d at 1117 stated:
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.
. . . drawings alone may be sufficient to provide the "written
description of the invention" required by § 112, first
paragraph.
It is also well settled that the question of whether a modification is an obvious variant of
that which is originally disclosed is irrelevant insofar as the written description
requirement is concerned. See, e.g., Lockwood v. American Airlines Inc., 107 F.3d
1565, 1571-72, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) and In re Wohnsiedler, 315
F.2d 934, 937, 137 USPQ 336, 339 (CCPA 1963). See also In re Barker, 559 F.2d at
593, 194 USPQ at 474, wherein the court, in quoting with approval from In re Winkhaus,
527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975) set forth: “That a person skilled in
the art might realize from reading the disclosure that such a step is possible is not a
sufficient indication to that person that that step is part of appellants’ invention.”
With these authorities in mind, we have carefully reviewed the appellants’ original
disclosure and find no descriptive support therein for “a first connecting member
moveably affixed to the first guide rail and hingedly connected to the storage surface”
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