Appeal No. 1996-3996
Application 08/250,578
would not return the track angle to the SP standard. Specifically, the Examiner argues that for
LP mode, the track spacing and the angle between the head and track would have to change.
In order to comply with the enablement provision of 35 U.S.C. § 112, first paragraph,
it must be determined whether a person skilled in the pertinent art, using the knowledge
available to such person and the disclosure in the patent document, could make and use the
invention without undue experimentation. Northern Telecom Inc. v. Datapoint Corp., 908
F.2d 931, 941, 15 USPQ2d 1321, 1329 (Fed. Cir. 1990).
Although not explicitly stated in section 112, to be enabling, the specification of a patent
must teach those skilled in the art how to make and use the full scope of the claimed invention
without "undue experimentation." In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed.
Cir. 1991); In re Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988
); In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (the first paragraph of
section 112 requires that the scope of protection sought in a claim bear a reasonable correlation
to the scope of enablement provided by the specification). Nothing more than objective
enablement is required, and therefore it
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