Appeal No. 1996-0963
Application 07/947,249
experimentation is necessary does not preclude enablement; what is
required is that the amount of experimentation “must not be unduly
extensive.” Atlas Powder Co. v. E.I. DuPont de Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The Patent and
Trademark Office Board of Appeals summarized the point well when it
stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of the
invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
Having reviewed the specification, including the working examples, in light of the
examiner’s commentary in the Answer, and appellants’ commentary on pages 2 through
14 of the Reply Brief, we are satisfied that the specification provides reasonable guidance
for one skilled in the art to make herbicide resistant monocotyledons, in addition to maize,
and that the experimentation necessary, while considerable, would not be undue. Finally,
to the extent that the examiner requires an assurance of certainty to demonstrate
enablement, we note that no legal authority has been cited in support of this requirement.
On the contrary, a requirement for certainty would be incompatible with any
experimentation at all.
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