Appeal No. 1996-2123
Application No. 08/069,458
Thus, the undue practice of many techniques may be required to
practice appellants= claimed invention especially since appellants admit
that stability and low gluconic acid production are not necessarily required
to produce reticulated cellulose (see page 23 lines 1-5, of the instant
Appeal Brief) . . . . Agitation alone does not provide sufficient criterion
for the production of reticulated cellulose since negative cellulose strains
and mutants are produced under agitated conditions spontaneously and
via the use of specific mutagens.
In response, appellants states:
Appellants believe that this new argument by the examiner reveals a
fundamental misunderstanding of the claimed invention. The claimed
invention is not directed to using agitation as a method of mutagenesis.
The claims are directed to strains of Acetobacter that are capable of
producing reticulated cellulose under the appropriate conditions.
See, Reply Brief page 5.
We agree with appellants.
In considering the enablement rejection before us for review, we find the following passage from
PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 37 USPQ2d 1618, 1623 (Fed. Cir.
1996) relevant:
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 USPQ2d 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 experimentation is necessary does not preclude enablement;
what is required is that the amount of experimentation Amust 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:
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