Appeal No. 2001-0936
Application No. 08/952,208
Novo Nordisk. A/S, 108 F.3d at 1365, 42 USPQ2d at 1004 (quoting
In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993)). See also 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). 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, 269 (CCPA 1971).
In the instant specification, it is taught how THA-1 may be
produced (Specification, page 1, lines 8-10). Indeed, it appears
that each of the reactants in the claimed step is and has been
known. The examiner has not established that any of the
reactants is unknown. We therefore find that the claimed subject
matter may be practiced by one of ordinary skill in the art
without undue experimentation. That the scope of the claims may
include sources made by any other means is not germane to the
determination of enablement.
We therefore reverse this rejection.
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