Appeal No. 1997-2167
Application 08/137,444
1384, 231 USPQ 81, 94 (Fed. Cir. 1986).
How such a teaching is set forth, whether by the use of
illustrative examples or by broad descriptive terminology, is
of no importance since a specification which teaches how to
make and use the invention in terms which correspond in scope
to the claims must be taken as complying with the first
paragraph of 35 U.S.C. § 112 unless there is reason to doubt
the objective truth of the statements relied upon therein for
enabling support. Marzocchi, at 439 F.2d 223, 169 USPQ 369. A
specification is considered to be enabling if a person of
ordinary skill in the art could "make and use" the claimed
invention without resort to "undue experimentation". In re
Borkowski, 422 F.2d 904, 908, 164 USPQ 642, 645 (CCPA 1970).
"Whether making and using an invention would have
required undue experimentation, and thus, whether a disclosure
is enabling under 35 U.S.C. § 112, ¶ 1 (1994), is a legal
conclusion based upon underlying factual inquiries." Johns
Hopkins University v. CellPro Inc., 152 F.3d 1342, 1354, 47
USPQ2d 1705, 1713 (Fed. Cir. 1998). Nevertheless, there must
be a reasonable correlation between the scope of what is
claimed and the scope of enablement provided by appellants'
specification to the person of ordinary skill in the art. In
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