Appeal No. 1996-0963
Application 07/947,249
monocotyledons, other than maize, exhibiting the required herbicide resistance, with no
guarantee of success.
We accept, for the sake of argument, that obtaining the claimed seeds and plants
by the processes disclosed in the specification might be more time consuming, or less
consistent, for some monocotyledons than for maize (although there is no evidence of
record that maize is not reasonably representative of monocotyledons in general).
Nevertheless, the examiner does not question the ability of one skilled in the art to follow
the disclosed processes, nor rely on any evidence which would allow one to conclude that
following the processes would be considered “undue experimentation” by one skilled in the
art.
As explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37
USPQ2d 1618, 1623 (Fed. Cir. 1996), undue experimentation has little to do with the
quantity of experimentation; it is much more a function of the amount of guidance or
direction provided:
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 USPQ 2d 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
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