Appeal No. 1997-3535
Application 08/476,394
Such a broad allegation by the examiner that the disclosure is speculative, coupled
with a recitation of various difficulties which might be encountered in practice, is not
sufficient basis for requiring proof of operability. In re Chilowsky, 229 F.2d 457, 463, 108
USPQ 321, 326 (CCPA 1956). It does not reasonably appear that the examiner has
advanced acceptable reasoning, specific argument or other form of evidence which would
support the proposition that one of ordinary skill in the art would find the specification
inconsistent with enablement. The examiner has not provided a reasoned analysis
indicating that the factors set forth in Ex Parte Forman have been considered in a
meaningful way to establish a prima facie case of enablement.
In considering the enablement rejection before us for review, we find the following
passage from PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d
1618, 1623 (Fed. Cir. 1996) to be instructive.
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 (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 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:
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