Appeal No. 1998-2914
Application 08/510,971
disclosure and the referenced flow chart diagram
reveals that there is no sufficient teachings and
examples that indicate how and in what manner the
various steps as itemized above are enabled. Here,
where the programming and software disclosure only
includes a flowchart, the likelihood of more than
routine experimentation being required to generate a
working program from such a flowchart also
increases. This is especially so when considering
that approximately 1600 man hours was necessary for
developing a working computer program for the
claimed invention.
However, as we have noted above, the examiner has the
initial burden of producing reasons that substantiate a
rejection based on lack of enablement. Moreover, as our
reviewing court stated in In re Wright, 999 F.2d 1557, 1561 27
USPQ2d 1510, 1513 (Fed. Cir. 1993):
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.” . . . (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 is
irrelevant whether this teaching is provided through
broad terminology or illustrative examples.
[Citations omitted; emphasis added.]
Here, although only a flowchart (as distinguished from a
complete computer program) has been provided, we are of the
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