Interference No. 103,141
so. Our independent conclusion is that Motion 15 of Sawada
for benefit stands properly DENIED.
The Denial of Sawada Preliminary Motion 10 for Judgment that
claims 1, 3-5, 9-12, 14-16, and 18-23 are Unpatentable under
35 U.S.C. § 112, First Paragraph
During the original motion period, Sawada filed a
motion for judgment under 37 CFR § 1.633(a) that claims 1, 3-
5, 9-12, 14-16, and 18-23 were unpatentable to Jin on the
grounds of lack of enablement. Sawada’s argument is that only
one oxide is
specifically disclosed in the Jin examples and such a
disclosure does not enable the broad oxide powder limitation
of Jin’s claims.
Although not explicitly stated in section 112, to be
enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the
claimed invention without "undue experimentation." In re
Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir.
1991); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988); In re Fisher, 427 F.2d 833, 839, 166 USPQ
24
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