Appeal No. 95-1484
Application 08/070,650
in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,
1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996), with regard to
the propriety of rejections of broadly claimed subject matter
under 35 U.S.C. § 112, first paragraph:
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 USPQ 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,
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