Appeal No. 95-2743
Application 08/023,016
mammalian host of claim 2 (or the mammalian host of claim 1), thus, it is not clear
what § 112, first paragraph, issues the examiner intends.
As to the remainder of the rejection, it appears that the examiner is concerned that
one skilled in the art could not make and use the claimed invention throughout its scope
without undue experimentation. To that end we direct attention to PPG Indus., Inc. v.
Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996)
wherein it was held that:
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
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