Appeal No. 1998-2043
Application No. 08/606,601
claim 7 indefinite (see Final Rejection, page 4), merely refers to rotational movement in a
particular direction, such as that represented by the arrow in instant Figure 2. We agree
with appellants to the extent that the recitation is reasonably clear in light of the teachings
of the instant specification, and accordingly do not sustain the rejection of claims 7-10.
Section 112, first paragraph rejections
We next turn to the rejection of claims 1-12 under 35 U.S.C. § 112, first paragraph,
for failing to provide an enabling disclosure.
The first paragraph of 35 U.S.C. 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art
to make and use the invention without ‘undue experimentation.’ In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is ‘undue.’ Id. at 736-37, 8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
The question is whether the disclosure is sufficient to enable those skilled in the art
to practice the claimed invention; the specification need not disclose what is well known in
the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d
1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (citing In re Myers, 410 F.2d 420, 161
USPQ 668 (CCPA 1969)). "A patent need not teach, and preferably omits, what is well
known in the art." Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3
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