Appeal 2006-2983
Application 10/733,957
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir.
2004)).
Once we have determined claim scope, we must then determine whether the
requirements of section 112, first paragraph have been met in the specification of
Breed. Section 112, first paragraph, requires that the specification satisfy written
description and enablement requirements.2
The factual inquiry for determining whether a specification provides
sufficient written description for the claimed invention is whether the specification
conveys with reasonable clarity to those skilled in the art that, as of the filing date
sought, applicant was in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). An applicant shows possession of the claimed invention by describing the
claimed invention with all of its limitations using such descriptive means as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (Fed. Cir. 1997).
The PTO bears the initial burden when rejecting claims for lack of
enablement. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the
2 The Examiner did not base his refusal to accord benefit on the best mode
requirement of section 112, first paragraph. As such, this issue is not before this
Board.
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