Appeal No. 96-0538
Application 08/126,450
artisan could make or use the claimed invention from the disclosed subject matter together with
information in the art without undue experimentation. United States v. Telectronics, Inc., 857 F.2d
778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert denied, 490 U.S. 1046 (1989). A disclosure
can be enabling even though some experimentation is necessary. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S.
947 (1987). Accordingly, we have to determine whether an undue amount of experimentation would
be needed to integrate all of the known algorithms into the disclosed flowgraph. In re Vaeck, 947 F.2d
488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
When the disclosed and claimed invention is considered as a whole, we find that some
experimentation would be required to integrate the functionally disclosed algorithms into the flowgraph.
We do not, however, believe that an undue amount of experimentation would be needed to tie the
algorithms together into a composite algorithm for making composite images. In the absence of express
reasons by the examiner as to why undue experimentation would be needed to arrive at such a
composite algorithm, we do not agree with the examiner’s conclusion (Answer, page 4) that “a
compositing algorithm is necessary to the claimed invention and is mandatory according to 35 USC
112, paragraph 1.” Thus, the lack of enablement rejection is reversed because the “compositing
algorithm” may be arrived at with a reasonable amount of experimentation, and the scope of the claims
bears a reasonable correlation to the scope of enablement provided by the disclosure. Genentech, Inc.
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