Appeal No. 2005-2695
Application No. 10/280,926
case-by-case basis.”)). 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. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39
USPQ2d 1895, 1904 (Fed. Cir. 1996). Nonetheless, the disclosure must convey with
reasonable clarity to those skilled in the art that the inventor was in possession of the
invention, Vas-Cath Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1116-17. One skilled in
the art, reading the original disclosure, must reasonably discern the limitation at issue in
the claims. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558, 31
UPSQ2d 1855, 1857 (Fed. Cir. 1994).
Whether a claim is enabled under 35 U.S.C. § 112, first paragraph is a question
of law, although based upon underlying factual findings. See PPG Indus., Inc. v.
Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996);
In re Goodman, 11 F.3d 1046, 1050, 29 USPQ2d 2010, 2013 (Fed. Cir. 1993). In re
Robertson, 169 F.3d at 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(recognizing that extrinsic evidence may be required to establish inherency).
The purpose of the enablement requirement is to “ensure[] that the public
knowledge is enriched by the patent specification to a degree at least commensurate
with the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation
5
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