Appeal No. 95-1083
Application No. 08/004,444
USPQ2d 2010, 2013-2015 (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 488,
496, 20 USPQ2d 1438, 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. Du Pont 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 (Bd. App. 1982).
To the extent that we understand the examiner's position in these rejections, it is
clear that the examiner has failed to make any of the findings which must be made before
a conclusion of "lack of utility" or "lack of enablement" may be properly reached.
The examiner bears the initial burden of providing reasons for doubting the
objective truth of the statements made by applicant as to the scope of enablement. In re
Marzocchi, 439 F.2d 220 at 223-24, 169 USPQ at 369-70 (CCPA 1971). On the record
before us, we conclude that the examiner has not established a reasonable basis for
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