Appeal No. 1997-2188
Application 08/137,440
(CCPA 1971). Moreover, in determining whether or not a
disclosure is enabling, it has been consistently held that the
enablement requirement of the first paragraph of 35 U.S.C. §
112 requires nothing more than objective enablement. In re
Marzocchi, 439 F.2d at 223, 169 USPQ at 369. In meeting the
enablement requirement, an application need not teach, and
preferably omits, that which is well-known in the art.
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
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
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