Appeal No. 1999-2330
Application No. 08/219,200
to use the claimed invention. Thus, we will limit our decision to this aspect of the
enablement rejection.
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 18, 24
(CCPA 1970) (the first paragraph of section 112 requires that the scope of protection
sought in a claim bear a reasonable correlation to the scope of enablement provided by
the specification). "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.'" [Emphasis added.] Genentech, Inc. v. Novo Nordisk, A/S,
108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir.1997) (quoting In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)). Conversely, the first
paragraph of section 112 requires that the scope of protection sought in a claim bear a
reasonable correlation to the scope of enablement provided by the specification.
Nothing more than objective enablement is required, and therefore it is irrelevant
whether this teaching is provided through broad terminology or illustrative examples. In
re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
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