Appeal No. 1996-2163
Application 08/106,541
Turning first to the rejection of claims 18 and 19 under the enablement and best
mode provisions of the first paragraph of 35 USC § 112, we reverse the rejection of these
claims to the extent it relies upon the best mode provision. The examiner has presented
us no evidence of concealment, accidental or intentional, on appellant’s part as to the
subject matter presently claimed as of the filing date of the present application. Note In re
Sherwood, 613 F.2d 809, 817, 204 USPQ 537, 544 (CCPA 1980), cert. denied, 450 U.S.
994, 210 USPQ 776 (1981).
As to the enablement issue, the specification must teach those skilled in the art how
to make and use the claimed invention without undue experimentation. Genentech, Inc. v.
Novo Nordisk A/S, 108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir.), cert.
denied, 118 S. Ct. 397 (1997). This same case indicates that the scope of the claims
must bear a reasonable correlation to the scope of enablement provided by the disclosure.
Enablement is also not precluded even if some experimentation is necessary, although the
amount of experimentation needed must not be unduly excessive. Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986),
cert. denied, 480 U.S. 947 (1987).
We reverse the rejection of claims 18 and 19 under the enablement provision of 35
USC § 112, first paragraph. The examiner’s view is based upon the failure of the
specification to specifically disclose the theoretical calculations and analysis providing the
basis of appellant’s invention as well as an adequate description of the claimed minimum
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