Appeal No. 95-2208
Application 07/987,572
document. Furthermore, it does not appear that the examiner has taken into account the
prior art in reaching his conclusion of non-enablement. This is legal error. Genentech, Inc.
v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ 1001, 1005 (Fed. Cir. 1997)(“A
specification need not disclose what is well known in the art.”).
To the extent the examiner has raised the issue of “undue experimentation”, the
examiner has only concluded that making and using certain embodiments within the scope
of the claims on appeal would require undue experimentation. The examiner has not
favored the record with any fact finding in support of this conclusion. As explained in PPG
Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed.
Cir. 1996)
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
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