Appeal No. 1996-2468
Application 08/091,899
however, the specification does not teach “how to use” the claimed invention within the
entire claim scope. We limit our review to the question of whether the specification
teaches how to use the invention within the scope of the claims.
An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contained sufficient
information regarding the subject matter of the appealed claims as to enable one skilled in
the pertinent art to make and use the claimed invention. The first paragraph of Section
112 requires that the scope of protection sought in a claim bear a reasonable correlation
to the scope of enablement provided by the specification. Nothing more than objective
enablement is required, and therefore it is irrelevant whether this teaching is provided
through broad terminology or illustrative examples. In re Fisher, 427 F.2d 833, 839, 166
USPQ 18, 24 (CCPA 1970); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971).
In order to establish a prima facie case of non-enablement, the examiner must
provide a reasonable explanation as to why the scope of protection provided by a claim is
not adequately enabled by the disclosure. See In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). A disclosure which contains a teaching of the
manner and process of making and using an invention in terms which correspond in scope
to those used in describing and defining the subject matter sought to be patented must be
taken as being in compliance with the enablement requirement of
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007