Appeal 2007-0255
Application 10/331,878
The Examiner (Answer 3 and 18-19) contends that Appellant's
Specification does not support the limitation in claim 53 that the boards slide
"directly" on each other, rather than indirectly on each other, touching each
other only indirectly through a plastic sheet or layer (Answer 19). The
Examiner has made no findings or offered any reasoning, however, as to the
issue of whether a person of ordinary skill in the art at the time of
Appellant's invention would have been able, without undue experimentation,
to make and/or use an evacuated panel as recited in claim 53 with the boards
sliding directly on each other to conform the panel to a non-planar surface.
The Examiner has thus failed to meet the initial burden of advancing
acceptable reasoning as to why Appellant's Specification does not satisfy the
enablement requirement.
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). Specifically,
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.
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