Appeal No. 95-1217
Application 08/039,674
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
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993) citing In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438,
1444 (Fed. Cir. 1991); In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Fisher, 427 F.2d
833, 839, 166 USPQ 18, 24 (CCPA 1970). "When rejecting a
claim under the enablement requirement of section 112, the PTO
bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification
of the application; this includes, of course, providing
sufficient reasons for doubting any assertions in the
specification as to the scope of enablement." In re Wright,
999 F.2d at 1561-62, 27 USPQ2d at 1513.
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