Appeal No. 2005-2695
Application No. 10/280,926
Sys., 166 F.3d 1190, 1196, 49 USPQ2d 1671, 1675 (Fed. Cir. 1999). One of our
predecessor courts has held the enablement and written description requirements to be
separate and distinct, and has held that a “specification may contain a disclosure that is
sufficient to enable one skilled in the art to make and use the invention and yet fail to
comply with the description of the invention requirement.” In re Barker, 559 F.2d 588,
591, 194 USPQ 470, 472 (CCPA 1977).
Also springing from these same underlying factual predicates is the § 112,
second paragraph, definiteness requirement. This requirement is distinct from the
enablement and description requirements, which arise from § 112, first paragraph.
[D]efiniteness and enablement are analytically distinct requirements, even though both
concepts are contained in 35 U.S.C. § 112. The definiteness requirement of 35 U.S.C.
§ 112, ¶ 2 is a legal requirement, based on the court’s role as construer of patent
claims...Definiteness requires the language of the claim to set forth clearly the domain
over which the applicant seeks exclusive rights.... The test for whether a claim meets
the definiteness requirement is “whether one skilled in the art would understand the
bounds of the claim when read in light of the specification.”
Process Control Corp. V. Hydreclaim Corp., 190 F.3d 1350, 1358, 52 USPQ2d 1029,
1034 (internal citations omitted). See also 3 Donald S. Chisum, Chisum on Patents,
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