Appeal No. 1997-0921
Application 08/038,577
OPINION
We reverse both rejections.
As to the enablement issue, the specification of the patent 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). For purposes of the
present disclosed and claimed invention, the person of ordinary skill in the art or artisan
appears to be one familiar with database organization and management in computerized
systems, particularly those related to object-oriented databases (OODB), and computer
aided machine process design. Note In re Naquin, 398 F.2d 863, 866, 158 USPQ 317,
319 (CCPA 1968) and In re Brown,
477 F.2d 946, 950, 177 USPQ 691, 694 (CCPA 1973).
Independent claims 1 and 9 on appeal are respective method and apparatus
versions which recite essentially the same subject matter in the respective statutory
classes. Claim 6 is substantially identical as a method claim to that subject matter set forth
3
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