Appeal No. 2005-1442 Page 5
Application No. 09/734,786
Cir. 1993). “That some experimentation may be required is not fatal; the issue is
whether the amount of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488,
495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
The enablement analysis must be focused on the product or method defined by
the claims. “Title 35 does not require that a patent disclosure enable one of ordinary
skill in the art to make and use a perfected, commercially viable embodiment absent a
claim limitation to that effect.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338,
68 USPQ2d 1940, 1944 (Fed. Cir. 2003).
Here, the examiner has acknowledged that the claims are not limited to
therapeutic methods, but argues that because therapeutic methods are encompassed
by the claims, such methods must be enabled in order for the full scope of the claims to
be enabled. See the Examiner’s Answer, page 12.
The examiner’s reasoning is logical but not entirely consistent with the case law:
enabling the “full scope” of a claim does not necessarily require enabling every
embodiment within the claim. See, e.g., Atlas Powder Co. v. E.I. Du Pont De Nemours
& Co., 750 F.2d 1569, 1576, 224 USPQ 409, 414 (Fed. Cir. 1984): “Even if some of the
claimed combinations were inoperative, the claims are not necessarily invalid. . . . Of
course, if the number of inoperative combinations becomes significant, and in effect
forces one of ordinary skill in the art to experiment unduly in order to practice the
claimed invention, the claims might indeed be invalid.” Atlas Powder concerned claims
to a product, not a method as here, but the same principle applies – a claimed method
does not lack enablement merely because it cannot be practiced under some
circumstances or to achieve some particular result.
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