Appeal No. 97-1871
Application 08/325,847
embodiments can be made without difficulty and their performance characteristics
predicted by resort to known scientific laws. In cases involving unpredictable factors,
such as most chemical reactions and physiological activity,
the scope of enablement obviously varies inversely with the degree of unpredictability of
the factors involved.
In the present case, Examples 2 and 3 on pages 5 to 6 of the specification disclose how to
make needles having a particular tip radius and body diameter. The ratios recited in claim 1 (range (1),
supra) as the end points of the claimed range are ratios calculated from the tip radius and needle
diameter of the needles resulting from Examples 2 and 3, respectively. This is a case involving
mechanical elements, and it appears to us that, given the disclosure in the present application, and
particularly Examples 2 and 3, it would be evident to one of ordinary skill, using only routine
experimentation, how to produce needles having ratios falling between the end points of the claimed
range. For similar reasons, we reach the same conclusion with respect to the ranges ( (2), supra)
recited in claims 4 and 30. Appellant's disclosure therefore satisfies the enablement requirement of §
112, first paragraph. See National Recovery Technologies Inc., v. Magnetic Separation Systems Inc.,
F.3d , 49 USPQ2d 1671, 1676 (Fed. Cir. 1999) ("In order to satisfy the enablement requirement
of § 112, paragraph 1, the specification must enable one of ordinary skill in the art to practice the
claimed invention without undue experimentation").
However, this does not end the inquiry under the first paragraph of § 112, because although the
examiner states the basis of the rejection as lack of enablement, both he and the appellant have argued
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