Appeal No. 95-1256
Application No. 08/043,917
is not an unpredictable art (see Background of the
Invention, specification, p. 1, lines 14-34). See In re
Fisher, 427 F.2d 833, 166 USPQ 18 (1970), where the court
stated that the scope of enablement varies inversely with
the degree of unpredictability of the involved factors.
While some experimentation may be required to determine the
right conditions for particular starting materials, we do
not consider such experimentation to be undue. As explained
in PPG Indus., Inc. v. Guardian Indus. Corp. , 75 F.3d 1558,
1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this court has refused to find broad generic claims enabled
by specifications that demonstrate the enablement of only one or a few embodiments
and do not demonstrate with reasonable specificity how to make and use other
potential embodiments across the full scope of the claim. See, e.g., In re Goodman,
11 F.3d 1046, 1050-52, 29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v.
Chugai Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-28
(Fed. Cir.), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991); In re
Vaeck, 947 F.2d at 496, 20 USPQ2d at 1445. Enablement is lacking in those cases,
the court has explained, because the undescribed embodiments cannot be made, based
on the disclosure in the specification, without undue experimentation. But the
question of undue experimentation is a matter of degree. The fact that some
experimentation is necessary does not preclude enablement; what is required is that
the amount of experimentation must not be unduly extensive. Atlas Powder Co., v.
E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir.
1984). The Patent and Trademark Office Board of Appeals summarized the point well
when it stated:
The test is not merely quantitative, since a considerable amount of
experimentation is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should proceed to
enable the determination of how to practice a desired embodiment of the
invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
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