Appeal No. 1995-2374
Application 07/673,158
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 Appeal 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).
Here, all the examiner has established is that some experimentation would be
required to make and use other embodiments of the claimed invention. What the examiner
has not done is perform the fact finding needed in order to reach a proper conclusion of
undue experimentation. The examiner has not relied upon any evidence in support of this
rejection which would establish that making and testing other sequences beyond those
described in the present specification amounts to undue experimentation. The examiner's
unsupported conclusion does not suffice.
The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
OTHER ISSUES
The following statement appears at page 4 of the Examiner's Answer:
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