Appeal 2007-0170
Application 10/262,510
IV. DISCUSSION
35 U.S.C. § 112, FIRST PARAGRAPH
In rejecting claim 11 under 35 U.S.C. § 112, first paragraph, the
Examiner takes the position that the newly added limitation “d comprises a
distance of at least 1 μm” in claim 11 does not have written descriptive
support in the application disclosure as originally filed (Answer 3). On the
other hand, the Appellants contend that such a limitation is supported by the
phrase “a distance in the range of μ m to millimeters” recited in original
claim 11 (Br. 3-4).
As our reviewing court in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991) 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.
Any claims in the application as originally filed may also provide the
“written description of the invention” required by § 112, first paragraph.
In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397 (CCPA 1973).
The dispositive question is, therefore, whether the newly added
limitation in question has written descriptive support in the application
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