Appeal No. 2005-1833 Page 8
Application No. 10/338,337
the description requirement found in the first paragraph of 35 U.S.C. § 112 is separate
from the enablement requirement of that provision. See Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and In re Barker,
559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434 U.S. 1238
(1978). With respect to 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.
The connector cap and first and second pump chambers of appellants’ dispenser
were not described anywhere in the application as originally filed as being “connected
together as one monolithic piece” as now recited in claim 23. Further, like Castner’s
cap member 20 and tubes 21, 22, the appellants’ connector cap 18 and first and second
pump chambers 32, 34 are illustrated in Figure 3 with a solid line drawn between them,
thus indicating that they are not connected as one monolithic piece, that is, cast as a
single piece. Further, the formation of appellants’ connector cap 18 and first and
second pump chambers 32, 34 would present the same problems imputed to such
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007