Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`KeyCite Yellow Flag - Negative Treatment
` Distinguished by Enzo Biochem, Inc. v. Gen-Probe Inc., Fed.Cir.(N.Y.),
`April 2, 2002
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`
`
`935 F.2d 1555
`United States Court of Appeals,
`Federal Circuit.
`
`VAS–CATH INCORPORATED and
`Gambro, Inc., Plaintiffs–Appellees,
`v.
`Sakharam D. MAHURKAR, and Quinton
`Instruments Company, Defendants–Appellants.
`
`Nos. 90–1528, 91–1032.
`|
`June 7, 1991.
`|
`Rehearing Denied July 8, 1991.
`|
`Suggestion for Rehearing In
`Banc Declined July 29, 1991.
`
`Corporation, its licensee and its sublicensee filed suit
`seeking declaratory judgment that their dual-lumen
`hemodialysis catheters did not infringe defendant's United
`States patents. The District Court, 745 F.Supp. 517, Frank
`H. Easterbrook, Circuit Judge, sitting by designation, held
`that two of defendant's patents were invalid. Appeal was
`taken. The Court of Appeals, Rich, Circuit Judge, held
`that material issues of fact existed as to whether design
`application's drawings provided “written description”
`of invention adequate to support claims of invalidated
`patents.
`
`Reversed and remanded.
`
`Attorneys and Law Firms
`
`*1556 William L. Mentlik, Lerner, David, Littenberg,
`Krumholz & Mentlik, Westfield, *1557 N.J., argued, for
`plaintiffs-appellees. With him on the brief, were Roy H.
`Wepner, John R. Nelson and Joseph S. Littenberg.
`
`Raymond P. Niro, Niro, Scavone, Haller & Niro,
`Chicago, Ill., argued, for defendants-appellants. With him
`on the brief, were Joseph N. Hosteny and John C. Janka.
`Of Counsel was Michael P. Mazza.
`
`Michael J. Sweedler, Darby & Darby, New York City,
`represented defendants-appellants, Quinton Instruments
`Co.
`
`Before RICH, MICHEL and PLAGER, Circuit Judges.
`
`Opinion
`
`RICH, Circuit Judge.
`
`Sakharam D. Mahurkar and Quinton Instruments
`Company (collectively Mahurkar) appeal from the
`September 12, 1990 partial final judgment 1 of the United
`States District Court for the Northern District of Illinois,
`Easterbrook, J., sitting by designation, in Case No. 88 C
`4997. Granting partial summary judgment to Vas–Cath
`Incorporated and its licensee Gambro, Inc. (collectively
`Vas–Cath), the district court declared Mahurkar's two
`United States utility patents Nos. 4,568,329 ('329 patent)
`and 4,692,141 ('141 patent), titled “Double Lumen
`Catheter,” invalid as anticipated under 35 U.S.C. §
`102(b). In reaching its decision, reported at 745 F.Supp.
`517, 17 USPQ2d 1353, the district court concluded that
`none of the twenty-one claims of the two utility patents
`was entitled, under 35 U.S.C. § 120, to the benefit of
`the filing date of Mahurkar's earlier-filed United States
`design patent application Serial No. 356,081 ('081 design
`application), which comprised the same drawings as
`the utility patents, because the design application did
`not provide a “written description of the invention” as
`required by 35 U.S.C. § 112, first paragraph. We reverse
`the grant of summary judgment with respect to all claims.
`
`1
`
`The district court directed entry of final judgment
`as to the issue of patent invalidity pursuant to
`Fed.R.Civ.P. 54(b).
`
`BACKGROUND
`
`Sakharam Mahurkar filed the '081 design application,
`also titled “Double Lumen Catheter,” on March 8, 1982.
`The application was abandoned on November 30, 1984.
`Figures 1–6 of the '081 design application are reproduced
`below.
`
`*1558
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`As shown, Mahurkar's catheter comprises er comprises
`a pair of tubes (lumens) designed to allow blood to be
`removed from an artery, processed in an apparatus that
`removes impurities, and returned close to the place of
`removal. Prior art catheters utilized concentric circular
`lumens, while Mahurkar's employs joined semi-circular
`tubes that come to a single tapered tip. Advantageously,
`the puncture area of Mahurkar's semicircular catheter is
`42% less than that of a coaxial catheter carrying the same
`quantity of blood, and its conical tip yields low rates of
`injury to the blood. The prior art coaxial catheters are
`now obsolete; Mahurkar's catheters appear to represent
`more than half of the world's sales. 745 F.Supp. at 520, 17
`USPQ2d at 1353–54.
`
`More than one year later, on October 1, 1984, Mahurkar
`filed the first of two utility patent applications that would
`give rise to the patents now on appeal. Notably, both
`utility applications included the same drawings as the
`'081 design application. 2 Serial No. 656,601 ('601 utility
`application) *1559 claimed the benefit of the filing date
`of the '081 design application, having been denominated a
`“continuation” thereof. In an Office Action mailed June
`6, 1985, the Patent and Trademark Office (PTO) examiner
`noted that “the prior application is a design application,”
`but did not dispute that the '601 application was entitled to
`its filing date. On January 29, 1986, Mahurkar filed Serial
`No. 823,592 ('592 utility application), again claiming the
`benefit of the filing date of the '081 design application (the
`'592 utility application was denominated a continuation
`of the '601 utility application). In an office action mailed
`April 1, 1987, the examiner stated that the '592 utility
`application was “considered to be fully supported by
`applicant's parent application SN 356,081 filed March
`8, 1982 [the '081 design application].” The '601 and '592
`utility applications issued in 1986 and 1987, respectively,
`as the '329 and '141 patents, the subjects of this appeal.
`The independent claims of both patents are set forth in the
`Appendix hereto.
`
`2
`
`The utility patent drawings contain additional but
`minor shading and lead lines and reference numerals
`not present in the design application drawings.
`
`Vas–Cath sued Mahurkar in June 1988, seeking a
`declaratory judgment that the catheters it manufactured
`did not infringe Mahurkar's '329 and '141 utility patents. 3
`Vas–Cath's complaint alleged, inter alia, that the '329 and
`'141 patents were both invalid as anticipated under 35
`U.S.C. § 102(b) by Canadian '089. Vas–Cath's anticipation
`theory was premised on the argument that the '329
`and '141 patents were not entitled under 35 U.S.C. §
`120 4 to the filing date of the '081 design application
`because its drawings did not provide an adequate “written
`description” of the claimed invention as required by 35
`U.S.C. § 112, first paragraph.
`
`After filing the '081 design application, Mahurkar also
`filed a Canadian Industrial Design application comprising
`the same drawings plus additional textual description.
`On August 9, 1982, Canadian Industrial Design 50,089
`(Canadian '089) issued on that application.
`
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`4
`
`Vas–Cath's apprehension of suit apparently arose
`from a 1988 Canadian action instituted by Mahurkar
`for infringement of Canadian '089.
`
`Section 120, titled “Benefit of Earlier Filing Date in
`the United States,” provides (emphasis ours):
`An application for patent for an invention
`disclosed in the manner provided by the first
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
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`paragraph of section 112 of this title in an
`application previously filed in the United States,
`or as provided by section 363 of this title, which
`is filed by an inventor or inventors named in the
`previously filed application shall have the same
`effect as to such invention, as though filed on
`the date of the prior application, if filed before
`the patenting or abandonment of or termination
`of proceedings on the first application or on
`an application similarly entitled to the benefit
`of the filing date of the first application and if
`it contains or is amended to contain a specific
`reference to the earlier filed application.
`
`Mahurkar counterclaimed, alleging infringement. Both
`parties moved for summary judgment on certain issues,
`including validity. For purposes of the summary judgment
`motion, Mahurkar conceded that, if he could not antedate
`it, Canadian '089 would represent an enabling and thus
`anticipating § 102(b) reference against the claims of his
`'329 and '141 utility patents. 745 F.Supp. at 521, 17
`USPQ2d at 1355. Vas–Cath conceded that the '081 design
`drawings enabled one skilled in the art to practice the
`claimed invention within the meaning of 35 U.S.C. §
`112, first paragraph. Id. Thus, the question before the
`district court was whether the disclosure of the '081
`design application, namely, the drawings without more,
`adequately meets the “written description” requirement
`also contained in § 112, first paragraph, so as to entitle
`Mahurkar to the benefit of the 1982 filing date of the '081
`design application for his two utility patents and thereby
`antedates Canadian '089.
`
`Concluding that the drawings do not do so, and that
`therefore the utility patents are anticipated by Canadian
`'089, the district court held the '329 and '141 patents wholly
`invalid under 35 U.S.C. § 102(b), id. at 524, 17 USPQ2d
`at 1358, and subsequently granted Mahurkar's motion for
`entry of a partial final judgment under Fed.R.Civ.P. 54(b)
`on the validity issue. This appeal followed.
`
`DISCUSSION
`
`have been antedated (and the basis for the court's grant of
`summary judgment nullified) as to those claims.
`
`[1]
` In reviewing the district court's grant of summary
`judgment, we are not bound by its holding that no material
`facts are in dispute, and must make an independent
`determination as to whether the standards for summary
`judgment have been met. C.R. Bard, Inc. v. Advanced
`Cardiovascular Systems, 911 F.2d 670, 673, 15 USPQ2d
`1540, 1542–43 (Fed.Cir.1990). Summary judgment will
`not lie if the dispute about a material fact is “genuine,”
`that is, if the evidence is such that a reasonable jury could
`return a verdict for the nonmoving party. Anderson v.
`Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505,
`2510, 91 L.Ed.2d 202 (1986).
`
`The “Written Description” Requirement of § 112
`The first paragraph of 35 U.S.C. § 112 requires that
`
`[t]he specification shall contain a
`written description of the invention,
`and of the manner and process of
`making and using it, in such full,
`clear, concise, and exact terms as
`to enable any person skilled in the
`art to which it pertains, or with
`which it is most nearly connected,
`to make and use the same, and
`shall set forth the best mode
`contemplated by the inventor of
`carrying out his invention.
`
`the “written
`(Emphasis added). Application of
`description” requirement, derived from the portion of §
`112 emphasized above, is central to resolution of this
`appeal. The district court, having reviewed this court's
`decisions on the subject, remarked that “[u]nfortunately, it
`is not so easy to tell what the law of the Federal Circuit is.”
`745 F.Supp. at 522, 17 USPQ2d at 1356. Perhaps that is so,
`and, therefore, before proceeding to the merits, we review
`the case law development of the “written description”
`requirement with a view to improving the situation. 5
`
`The issue before us is whether the district court erred in
`concluding, on summary judgment, that the disclosure of
`the '081 design application does not provide a § 112, first
`paragraph “written description” adequate to support each
`of the claims of *1560 the '329 and '141 patents. If the
`court so erred as to any of the 21 claims at issue, the
`admittedly anticipatory disclosure of Canadian '089 will
`
`5
`
`see Rollins,
`background,
`additional
`For
`“35 USC 120—The Description Requirement,”
`(1982); Walterscheid,
`64 J.Pat.Off.Soc'y 656
`“Insufficient Disclosure Rejections (Part III),” 62
`J.Pat.Off.Soc'y 261 (1980).
`
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`indicate that the “written description”
`The cases
`requirement most often comes into play where claims
`not presented in the application when filed are presented
`thereafter. Alternatively, patent applicants often seek the
`benefit of the filing date of an earlier-filed foreign or
`United States application under 35 U.S.C. § 119 or 35
`U.S.C. § 120, respectively, for claims of a later-filed
`application. The question raised by these situations is
`most often phrased as whether the application provides
`“adequate support” for the claim(s) at issue; it has also
`been analyzed in terms of “new matter” under 35 U.S.C.
`§ 132. The “written description” question similarly arises
`in the interference context, where the issue is whether the
`specification of one party to the interference can support
`the claim(s) corresponding to the count(s) at issue, i.e.,
`whether that party “can make the claim” corresponding
`to the interference count.
`
`To the uninitiated, it may seem anomalous that the first
`paragraph of 35 U.S.C. § 112 has been interpreted as
`requiring a separate “description of the invention,” when
`the invention is, necessarily, the subject matter defined in
`the claims under consideration. See In re Wright, 866 F.2d
`422, 424, 9 USPQ2d 1649, 1651 (Fed.Cir.1989). One may
`wonder what purpose a separate “written description”
`requirement serves, when the second paragraph of §
`112 expressly requires that the applicant conclude his
`specification “with one or more claims particularly
`pointing out and distinctly claiming the subject matter
`which the applicant regards as his invention.”
`
`One explanation is historical: the “written description”
`requirement was a part of the patent statutes at a time
`before claims were required. A case in point is Evans
`v. Eaton, 20 U.S. (7 Wheat.) 356, 5 L.Ed. 472 (1822),
`in which the Supreme Court affirmed the circuit court's
`decision that the *1561 plaintiff's patent was “deficient,”
`and that the plaintiff could not recover for infringement
`thereunder. The patent laws then in effect, namely the
`Patent Act of 1793, did not require claims, but did require,
`in its 3d section, that the patent applicant “deliver a
`written description of his invention, and of the manner
`of using, or process of compounding, the same, in such
`full, clear and exact terms, as to distinguish the same
`from all things before known, and to enable any person
`skilled in the art or science of which it is a branch, or with
`which it is most nearly connected, to make, compound and
`use the same....” Id. at 430. In view of this language, the
`Court concluded that the specification of a patent had two
`
`objects, the first of which was “to enable artizans to make
`and use [the invention]....” Id. at 433. The second object
`of the specification was
`
`to put the public in possession of
`what the party claims as his own
`invention, so as to ascertain if he
`claims anything that is in common
`use, or is already known, and to
`guard against prejudice or injury
`from the use of an invention which
`the party may otherwise innocently
`suppose not to be patented. It
`is, therefore, for the purpose of
`warning an innocent purchaser, or
`other person using a machine, of
`his infringement of the patent; and
`at the same time, of taking from
`the inventor the means of practising
`upon the credulity or the fears of
`other persons, by pretending that his
`invention is more than what it really
`is, or different from its ostensible
`objects, that the patentee is required
`to distinguish his invention in his
`specification.
`
`Id. at 434.
`
`A second, policy-based rationale for the inclusion in §
`112 of both the first paragraph “written description” and
`the second paragraph “definiteness” requirements was set
`forth in Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551,
`211 USPQ 303, 321 (3d Cir.), cert. denied, 454 U.S. 1055,
`102 S.Ct. 600, 70 L.Ed.2d 591 (1981):
`
`is a subtle relationship
`[T]here
`the policies underlying
`between
`the description and definiteness
`requirements, as the two standards,
`while complementary, approach a
`similar problem
`from different
`directions. Adequate description of
`the invention guards against the
`inventor's overreaching by insisting
`that he recount his invention in such
`detail that his future claims can
`be determined to be encompassed
`within his original creation. The
`definiteness requirement shapes the
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`future conduct of persons other than
`the inventor, by insisting that they
`receive notice of the scope of the
`patented device.
`
`With respect to the first paragraph of § 112 the severability
`of its “written description” provision from its enablement
`(“make and use”) provision was recognized by this court's
`predecessor, the Court of Customs and Patent Appeals,
`as early as In re Ruschig, 379 F.2d 990, 154 USPQ 118
`(CCPA 1967). Although the appellants in that case had
`presumed that the rejection appealed from was based on
`the enablement requirement of § 112, id. at 995, 154 USPQ
`at 123, the court disagreed:
`
`[T]he question is not whether [one skilled in the art]
`would be so enabled but whether the specification
`discloses the compound to him, specifically, as
`something appellants actually invented.... If [the rejection
`is] based on section 112, it is on the requirement
`thereof that “The specification shall contain a written
`description of the invention * * *.” (Emphasis ours.)
`
`Id. at 995–96, 154 USPQ at 123 (first emphasis added).
`The issue, as the court saw it, was one of fact: “Does the
`specification convey clearly to those skilled in the art, to
`whom it is addressed, in any way, the information that
`appellants invented that specific compound [claimed]?” Id.
`at 996, 154 USPQ at 123.
`
`In a 1971 case again involving chemical subject matter, the
`court expressly stated that “it is possible for a specification
`to enable the practice of an invention as broadly as
`it is claimed, and still not describe that invention.” In
`re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593
`(CCPA 1971) (emphasis added). As an example, the court
`posited the situation “where the specification discusses
`only compound A *1562 and contains no broadening
`language of any kind. This might very well enable one
`skilled in the art to make and use compounds B and C; yet
`the class consisting of A, B and C has not been described.”
`Id. at 1405 n. 1, 168 USPQ 593 n. 1 (emphases in original).
`See also In re Ahlbrecht, 435 F.2d 908, 911, 168 USPQ
`293, 296 (CCPA 1971) (although disclosure of parent
`application may have enabled production of claimed esters
`having 2–12 methylene groups, it only described esters
`having 3–12 methylene groups).
`
`The CCPA also recognized a subtle distinction between
`a written description adequate to support a claim under
`
`§ 112 and a written description sufficient to anticipate
`its subject matter under § 102(b). The difference between
`“claim-supporting disclosures” and “claim-anticipating
`disclosures” was dispositive in In re Lukach, 442 F.2d
`967, 169 USPQ 795 (CCPA 1971), where the court
`held that a U.S. “grandparent” application did not
`sufficiently describe the later-claimed invention, but
`that the appellant's intervening British application, a
`counterpart to the U.S. application, anticipated the
`claimed subject matter. As the court pointed out,
`“the description of a single embodiment of broadly
`claimed subject matter constitutes a description of the
`invention for anticipation purposes ..., whereas the same
`information in a specification might not alone be enough
`to provide a description of that invention for purposes
`of adequate disclosure....” Id. at 970, 169 USPQ at 797
`(citations omitted).
`
`The purpose and applicability of the “written description”
`requirement were addressed in In re Smith and Hubin, 481
`F.2d 910, 178 USPQ 620 (CCPA 1973), where the court
`stated:
`
`the description
`Satisfaction of
`requirement
`insures that subject
`matter presented in the form of a
`claim subsequent to the filing date
`of the application was sufficiently
`disclosed at the time of filing so that
`the prima facie date of invention can
`fairly be held to be the filing date of
`the application. This concept applies
`whether the case factually arises out
`of an assertion of entitlement to
`the filing date of a previously filed
`application under § 120 ... or arises
`in the interference context wherein
`the issue is support for a count in
`the specification of one or more of
`the parties ... or arises in an ex parte
`case involving a single application,
`but where the claim at issue was
`filed subsequent to the filing of the
`application....
`
`Id. at 914, 178 USPQ at 623–24 (citations omitted).
`
`The CCPA's “written description” cases often stressed the
`fact-specificity of the issue. See, e.g., In re Wertheim, 541
`F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (“The
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`primary consideration is factual and depends on the
`nature of the invention and the amount of knowledge
`imparted to those skilled in the art by the disclosure”)
`(emphasis in original); In re Smith, 458 F.2d 1389, 1395,
`173 USPQ 679, 683 (CCPA 1972) (“Precisely how close the
`description must come to comply with § 112 must be left to
`case-by-case development”); DiLeone, 436 F.2d at 1405,
`168 USPQ at 593 (“What is needed to meet the description
`requirement will necessarily vary depending on the nature
`of the invention claimed”). The court even went so far as
`to state:
`
`[I]t should be readily apparent
`from
`recent decisions of
`this
`court
`involving the question of
`compliance with the description
`requirement of § 112 that each case
`must be decided on its own facts.
`Thus, the precedential value of cases
`in this area is extremely limited.
`
`In re Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438
`(CCPA 1977).
`
`Since its inception, the Court of Appeals for the Federal
`Circuit has frequently addressed the “written description”
`requirement of § 112. 6 A fairly uniform standard *1563
`for determining compliance with the “written description”
`requirement has been maintained throughout: “Although
`[the applicant] does not have to describe exactly the
`subject matter claimed, ... the description must clearly
`allow persons of ordinary skill in the art to recognize that
`[he or she] invented what is claimed.” In re Gosteli, 872
`F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.Cir.1989)
`(citations omitted). “[T]he test for sufficiency of support
`in a parent application is whether the disclosure of the
`application relied upon ‘reasonably conveys to the artisan
`that the inventor had possession at that time of the later
`claimed subject matter.’ ” Ralston Purina Co. v. Far–
`Mar–Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179
`(Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375,
`217 USPQ 1089, 1096 (Fed.Cir.1983)). Our cases also
`provide that compliance with the “written description”
`requirement of § 112 is a question of fact, to be reviewed
`under the clearly erroneous standard. Gosteli, 872 F.2d at
`1012, 10 USPQ2d at 1618; Utter v. Hiraga, 845 F.2d 993,
`998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988).
`
`See, Chester v. Miller, 906 F.2d 1574, 15 USPQ2d
`1333 (Fed.Cir.1990) (parent application's disclosure
`of chemical species constituted 102(b) prior art
`against continuation-in-part (c-i-p) application on
`appeal, but did not provide sufficient written
`description to support c-i-p's claims to encompassing
`genus); In re Gosteli, 872 F.2d 1008, 10 USPQ2d
`1614 (Fed.Cir.1989) (foreign priority application's
`disclosure of chemical subgenus was insufficient
`written description to support genus claims of
`corresponding U.S. application); In re Wright, 866
`F.2d 422, 9 USPQ2d 1649 (Fed.Cir.1989) (application
`in “clear compliance” with § 112 “written description”
`requirement with respect to claim limitation that
`microcapsules were “not permanently fixed”); Utter
`v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714
`(Fed.Cir.1988) (holding generic interference count to
`scroll compressor supported by written description
`of foreign priority application, the court stated,
`“A specification may, within the meaning of 35
`U.S.C. § 112 ¶ 1, contain a written description of
`a broadly claimed invention without describing all
`species that claim encompasses”); Kennecott Corp. v.
`Kyocera Int'l, Inc., 835 F.2d 1419, 5 USPQ2d 1194
`(Fed.Cir.1987) (parent application's lack of express
`disclosure of inherent “equiaxed microstructure”
`property did not deprive c-i-p's claims to a sintered
`ceramic body having said property of the benefit
`of parent's filing date), cert. denied, 486 U.S. 1008,
`108 S.Ct. 1735, 100 L.Ed.2d 198 (1988); Ralston
`Purina Co. v. Far–Mar–Co, Inc., 772 F.2d 1570,
`227 USPQ 177 (1985) (parent application's disclosure
`provided adequate written description support for
`certain claim limitations respecting protein content,
`temperature, and moisture content, but not others);
`In re Wilder, 736 F.2d 1516, 222 USPQ 369 (1984)
`(broadly worded title, general description of drawing,
`and objects of invention of parent patent application
`did not adequately support reissue application claims
`directed to genus of indicating mechanisms for
`dictating machines), cert. denied, 469 U.S. 1209, 105
`S.Ct. 1173, 84 L.Ed.2d 323 (1985); In re Kaslow, 707
`F.2d 1366, 217 USPQ 1089 (Fed.Cir.1983) (claims
`to method of redeeming merchandise coupons,
`comprising step of providing an audit of coupon
`traffic, were not supported by specification of parent
`application).
`
`There appears to be some confusion in our decisions
`concerning the extent to which the “written description”
`requirement is separate and distinct from the enablement
`requirement. For example, in In re Wilder, 736 F.2d 1516,
`1520, 222 USPQ 369, 372 (Fed.Cir.1984), cert. denied, 469
`
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985), we flatly
`stated: “The description requirement is found in 35 U.S.C.
`§ 112 and is separate from the enablement requirement
`of that provision.” However, in a later case we said,
`“The purpose of the [written] description requirement [of
`section 112, first paragraph] is to state what is needed to
`fulfill the enablement criteria. These requirements may be
`viewed separately, but they are intertwined.” Kennecott
`Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421, 5
`USPQ2d 1194, 1197 (Fed.Cir.1987), cert. denied, 486 U.S.
`1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988). “The written
`description must communicate that which is needed to
`enable the skilled artisan to make and use the claimed
`invention.” Id.
`
`[3]
`[2]
` To the extent that Kennecott conflicts with
`
`Wilder, we note that decisions of a three-judge panel of
`this court cannot overturn prior precedential decisions.
`See UMC Elec. Co. v. United States, 816 F.2d 647,
`652 n. 6, 2 USPQ2d 1465, 1468 n. 7 (Fed.Cir.1987),
`cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d
`761 (1988). This court in Wilder (and the CCPA before
`it) clearly recognized, and we hereby reaffirm, that
`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 *1564 sought, he or she
`was in possession of the invention. The invention is, for
`purposes of the “written description” inquiry, whatever is
`now claimed.
`
`The District Court's Analysis
`[4]
` We agree with the district court's conclusion that
`drawings alone may be sufficient to provide the “written
`description of the invention” required by § 112, first
`paragraph. Several earlier cases, though not specifically
`framing the issue in terms of compliance with the “written
`description” requirement, support this conclusion.
`
`For example, we previously stated that “[t]here is no
`statutory prohibition against an applicant's reliance, in
`claiming priority under 35 U.S.C. § 120, on a disclosure
`in a design application if the statutory conditions are
`met.” KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d
`1571, 1574, 228 USPQ 32, 33 (Fed.Cir.1985). The question
`whether the applicant's claim to a pocket for athletic shoes
`
`was in fact entitled to the filing date of his earlier design
`application was not resolved in KangaROOS, however.
`Issues of intent to deceive the PTO were involved, as well
`as an error of law by the district court in construing the
`claims of the wrong application. Id. at 1574–75, 228 USPQ
`at 34–35. The district court's grant of partial summary
`judgment of inequitable conduct was vacated and the case
`remanded for trial.
`
`In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981)
`involved a claim under 35 U.S.C. § 120 to the benefit of
`the filing date of two earlier design patent applications
`that included drawings of a carrying and storage case
`for tape cartridges and cassettes. The invention claimed
`in the later-filed utility application was an “insert” of
`“compartmented form,” adapted for use in the interior
`of the storage case. Id. at 429, 209 USPQ at 47. The
`court characterized the dispositive issue as “whether the
`design applications sufficiently disclose the invention now
`claimed in the ... utility application at bar.” Id. at 429, 209
`USPQ at 46. While specifically recognizing that “drawings
`may be used to satisfy the disclosure requirement,” id. at
`429, 209 USPQ at 46–47, the court held that Berkman's
`design applications “fail[ed] to disclose the claimed
`invention sufficiently to comply with the requirements of
`§ 112 first paragraph.” As the court explained:
`
`Nowhere in the design applications
`is the word “insert” used, nor is there
`any indication that the interiors of
`the cases are inserts. The drawings
`do not disclose how the insert can be
`used to accommodate either cassette
`or cartridge type tape enclosures.
`Berkman argues that one skilled in
`the art would readily recognize that
`the interiors of the cases illustrated
`in the design drawings are inserts.
`We do not agree. There is nothing
`shown in the drawings to lead one of
`ordinary skill to such a conclusion.
`
`Id. at 430, 209 USPQ at 47.
`
`The issue in In re Wolfensperger, 49 CCPA 1075, 302 F.2d
`950, 133 USPQ 537 (1962) was whether the specification of
`the applicant's utility patent application disclosing a ball
`valve, and particularly the drawings thereof, supported
`a claim limitation that read: “having, in untensioned
`condition, a mean diameter corresponding approximately
`
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
`59 USLW 2766, 19 U.S.P.Q.2d 1111
`
`to the mean diameter of said chamber and a radial width
`smaller than the radial width of said chamber....” Id. at
`1077, 302 F.2d at 952, 133 USPQ at 538. The court did not
`agree with the Board's conclusion that the “radial width”
`relationship was not supported by applicant's figure 5:
`
`Id.
`
`against “new matter,” we feel that
`supporting disclosure exists. The
`rejection is therefore in error.
`
`The board's statement that “drawings alone cannot
`form the basis of a valid claim” is too broad
`a generalization to be valid and is, furthermore,
`contrary to well-settled and long-established Patent
`Office practice.... Consider, for one thing, that the sole
`disclosure in a design patent application is by means of
`a drawing.... For another thing, consider that the only
`informative and significant disclosure in many electrical
`and chemical patents is by means of circuit diagrams or
`graphic formulae, constituting “drawings” in the case....
`
`... The practical, legitimate enquiry in each case of this
`kind is what the drawing in fact discloses to one skilled
`in the art....
`
`*1565 ... The issue here is whether there is supporting
`“disclosure” and it does not seem, under established
`procedure of long standing, approved by this court, to
`be of any legal significance whether the disclosure is
`found in the specification or in the drawings so long as
`it is there.
`
`Id. at 1080–83, 302 F.2d at 955–56, 133 USPQ at 541–42.
`
`Employing a “new matter” analysis, the court in In re
`Heinle, 342 F.2d 1001, 145 USPQ 131 (CCPA 1965)
`reversed a PTO rejection of the applicant's claims to a
`“toilet paper core” as “including subject matter having no
`clear basis in the application as filed.” Id. at 1003, 145
`USPQ at 133. The claim limitation said to be without
`support required that