Appeal No. 97-1627 Page 14
Application No. 08/202,991
there is nothing to show that one skilled in the art could not
easily select operative combinations, i.e. make and use a
sensor. Appellant has provided ample reasons that show one
skilled in the art can practice the invention. The choice of
materials is a nonissue; Appellant has shown that the only
requirement for the FM and NM materials is that they be
magnetic and conductive. The thicknesses depend on the
material properties, magnetostatic coupling, and single
magnetic domain size. The number of layers depends on desired
sensitivity. Of course, one does not need to produce every
variation that is encompassed by the claims. For example, one
does not need to make every layer of a different material; one
can use one material for all FM layers. But the claims need
to cover the case of using some other material for some of the
layers; otherwise one could avoid infringement merely by
adding some layers of a different material when they are
functionally the same. (Reply Br. at 3.)
To be enabling under § 112, a patent must contain a
description that enables one skilled in the art to make and
use the claimed invention. That some experimentation is
necessary does not preclude enablement. All that is required
is that experimentation not be unduly extensive. Atlas Powder
Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984).
We find that one skilled in the art could make and use
the appellants’ sensor without undue experimentation. The
appellants defined ranges of materials for, numbers of, and
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