Appeal No. 95-0802
Application 07/814,078
encompassed by the claims, does not constitute evidence to doubt Appellants’ assertions
regarding embodiments other than those demonstrated in the specification. Moreover,
given the straightforward, routine protocol outlined in the specification, we are in
agreement with Appellants that the experimentation necessary to practice the claimed
invention throughout its scope would not be undue, and that “one of skill in the art having
read this patent application, would nonetheless be armed with the skills required to
undertake any screening or procedural methods required to carry out the claimed
invention.” Brief, page 14. As explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75
F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996), the test for undue
experimentation is not merely quantitative:
In unpredictable art areas, this court has refused to find broad generic claims
enabled by specifications that demonstrate the enablement of only one or a
few embodiments and do not demonstrate with reasonable specificity how to
make and use other potential embodiments across the full scope of the
claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d
2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai 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:
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