Appeal No. 98-1012
Serial No. 08/117,342
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
concentration in the detecting medium in addition to what is
described, 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 Amust not be unduly
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