Appeal No. 2001-1739
Application 08/892,903
35 U.S.C. § 112, Para. 1 (1994).” “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’.” Genetech, Inc. v. Novo Nordisk, A/S
108 F.3d 136, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997)
(quoting In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993)). Whether claims are sufficiently enabled by a
disclosure in a specification is determined as of the date that
the patent application was first filed, see Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986), . . . We have held that a patent specification
complies with the statute even if a “reasonable” amount of
routine experimentation is required in order to practice a
claimed invention, but that such experimentation must not be
“undue.” See, e.g., In re Wands, 858 F.2d at 736-37, 8 USPQ2d at
1404 (“Enablement is not precluded by the necessity for some
experimentation . . . . However, experimentation needed to
practice the invention must not be undue experimentation. The
key word is ‘undue,’ not ‘experimentation’.”) (footnotes,
citations, and internal quotation marks omitted). In Wands, we
set forth a number of factors which a court may consider in
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