The Written Description Requirement

基于35 U.S.C. 112第一段的rejection：没有满足Written Description Requirement
the claim(s) contains subject matter that was not described in the spec in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.

written description requirement 和 enablement requirement 的区别：

In light of the Vas-Cath opinion the written description requirement is clearly distinct from the enabling requirement. 40 The first case, however, that distinguished the written description requirement from the enablement requirement was In re Ruschig. 41 In that case the court stated that the issue concerning the description requirement is whether the specification clearly conveys to those skilled in the art the information that the inventors invented the specific compound.42 The original patent in In re Ruschig was filed in 1956 and involved chemical compounds for use as oral medications to control diabetes. 43 The original patent application included claims for numerous specific chemical compounds. 44 A little more than a year after the original application was filed, the applicants added claims to an additional chemical compound.45 The issue before the court was whether the claims to the additional compound were supported by the disclosure in the original application's specification.46 The court, affirming the Patent Office Board of Appeals, stated the following,

"[n]ot having been specifically named or mentioned in any manner, one is left to select from the myriads of possibilities encompassed by the broad disclosure, with no guide indicating or directing that this particular selection should be made rather than any of the many others which could also be made."47

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The applicants argued, however, that the new compound complied with section 112 since one skilled in the art would be enabled by the specification to make the new compound.48 The court disagreed with the argument for two reasons:

"First, it presumes some motivation for wanting to make the compound in preference to others. While we have no doubt a person so motivated would be enabled by the specification to make it, this is beside the point for the question is not whether he would be so enabled but whether the specification discloses the compound to him, specifically, as something appellants actually invented. We think it does not. Second, we doubt that the rejection is truly based on section 112, at least on the parts relied on by appellants [i.e. the enablement requirement]. If based on section 112, it is on the requirement thereof that 'The specification shall contain a written description of the invention . . . .'" 49

The court concluded that the specification did not convey clearly to those skilled in the art that the applicants had invented the additional compound.50

It is possible for a specification to enable the use and practice of an invention as broadly as it is claimed, and still not describe the invention. 51 The Court of Customs and Patent Appeals described this scenario in the following way:

"[C]onsider the case where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable on 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."52

The Federal Circuit, however, has not always analyzed the written description requirement versus the enablement requirement correctly. 53 In Kennecott Corporation v. Kyocera International, Inc. the Federal Circuit stated that the "purpose of the description requirement of [the first paragraph section 112] is to state what is needed to fulfill the enablement criteria. These requirements may be viewed separately, but they are intertwined."54 The court corrected itself in the 1991 case of Vas-Cath Inc. v. Mahurkar by reaffirming previous case law that held that the written description requirement of the first paragraph of section 112 is distinct from the enablement requirement. 55 The court stated, "[t]he 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." 56