Appeal No. 96-1027
Application 08/162,288
1991). While some experimentation may be necessary, that 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). Here, we can find no persuasive reasoning why the
specification does not reasonably enable one skilled in the art to practice the invention as
broadly as it is claimed and without undue experimentation. See In re Marzocchi, 439 F.2d
220 at 223-24, 169 USPQ at 369-70 (CCPA 1971).
Here, all we are provided is examiner's assertion that, except when employing DNA
constructs involving polygalacturonase and pectinesterase sequences derived from
tomato, tomato plant cells, pJR16S, and/or a recombinant DNA of a specified sequence
segment length (although examiner does not say what that length should be), the claimed
process is unpredictable and therefore, "[g]iven this unpredictability, the limited guidance
presented in the specification, and the breadth of the claims, it is deemed that undue
experimentation would be required of one skilled in the art to
practice the invention as so broadly claimed.…" Examiner's Answer, p. 4. No fact finding
has been done by the examiner to support this assertion.
It is true that unpredictability is a factor to be considered.
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.
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