Interference No. 103,906
§ 112 requires that the scope of the claims must bear a
reasonable correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art. Also, the
scope of enablement varies inversely with the degree of
unpredictability in the art. Wright, 999 F.2d at 1561, 27 USPQ2d
at 1513; In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444
(Fed. Cir. 1991); Amgen Inc. v. Chugai Pharm. Co., 927 F.2d 1200,
1214, 18 USPQ2d 1016, 1028 (Fed. Cir. 1991); In re Angstadt, 537
F.2d at 501-02, 190 USPQ at 217-18; In re Fisher, 427 F.3d 833,
839, 166 USPQ 18, 24 (CCPA 1970).
Moreover, 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.”
Factors which may be considered in determining whether a
disclosure would require undue experimentation are:
(1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented,
(3) the presence or absence of working examples,
(4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims.
Enzo Biochem, Inc., v. Calgene, Inc., 188 F.3d 1362, 1371-74, 52
USPQ2d 1129, 1135-38 (Fed. Cir. 1999).
Based upon the foregoing principles of law, we agree with
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