Appeal No. 95-0365
Application 07/921,537
para. 3. We agree. It is well established that to satisfy the
enablement requirement of 35 U.S.C. § 112, first paragraph, the
specification must teach those skilled in the art how to make and
use the full scope of the claimed invention without undue
experimentation. PPG Indus. Inc., v. Guardian Indus. Corp.,
75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996); In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513; In re Vaeck,
947 F.2d 488, 495-96, 20 USPQ2d 1438, 1444-45 (Fed. Cir. 1991).
In the case before us, we do not find any guidance or teachings
in the specification as to how to make and use the claimed
compositions without the presence of a metal drier. In fact, to
the contrary, the referenced sentence from p. 12 of the
specification explicitly states that without drier the
autoxidation process is so slow that it has no practical use.
Cf. Brenner v. Manson 383 U.S. 519, 534-35 (1966) (“The basic
quid pro quo contemplated by the Constitution and the Congress
for granting a patent monopoly is the benefit derived by the
public from an invention with substantial utility. Unless and
until a process is refined and developed to this point-- where
specific benefit exists in currently available form-- there is
insufficient justification for permitting an applicant to engross
[in] what may prove to be a broad field”).
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