Appeal No. 94-1483
Application No. 07/695,141
Pharmaceutical Co., 927 F.2d 1200, 1212-14, 18 USPQ2d
1016, 1026-28 (Fed. Cir.), cert. denied, 502 U.S. 856
(1991); In re Vaeck, 947 F.2d at 496, 20 USPQ2d at 1445.
Enablement is lacking in those cases, the court has
explained, because the undescribed embodiments cannot be
made, based on the disclosure in the specification,
without undue experimentation. But the question of undue
experimentation is a matter of degree. The fact that
some experimentation is necessary does not preclude
enablement; what is required is that the amount of
experimentation "must not be unduly extensive." Atlas
Powder Co., v. E.I. DuPont de Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The
Patent and Trademark Office Board of Appeals summarized
the point well when it stated:
The test is not merely quantitative, since a
considerable amount of experimentation is
permissible, if it is merely routine, or if the
specification in question provides a reasonable
amount of guidance with respect to the direction
in which the experimentation should proceed to
enable the determination of how to practice a
desired embodiment of the invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
On these facts, we believe that a hypothethical person skilled
in the art could not make and use the claimed invention2
2Though we have discussed only claims 3, 4 and 14 in
setting forth our reasons in support of this rejection,
nevertheless, the rejection extends to all claims pending. We
have reviewed each claim and find that no claim further limits
the independent claims in a substantive manner regarding the
scope of the Ti " and $ subunit or the Ti ( and * subunit
polypeptides or corresponding nucleic acids. Rather, the
dependent claims are directed to other peripheral aspects of
the invention beyond the polypeptides and nucleic acid
sequences required to make and use the claimed invention
throughout its scope.
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