Appeal No. 1997-2325
Application No. 08/486,403
The issue raised by the examiner is whether one skilled in the art could make
and use the claimed invention throughout its scope without undue experimentation.
As explained in PPG Indus., Inc. v. Guardian Indus. Corp.,
75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of
only one or a few embodiments and do not demonstrate with
reasonable specificity how to make and use other potential
embodiments across the full scope of the claim. See, e.g., In re
Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d 2010, 2013-15 (Fed.
Cir. 1993); Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d.
1200, 1212-14, 18 USPQ2d 1016, 1026-28 (Fed. Cir.), cert. denied,
502 U.S. 856 (1991); In re Vaeck, 947 F.2d at 496, 20 USPQ2d at
1445. Enablement is lacking in those cases, the court has explained,
because the undescribed embodiments cannot be made, based on
the disclosure in the specification, without undue experimentation.
But the question of undue experimentation is a matter of degree. The
fact that some experimentation is necessary does not preclude
enablement; what is required is that the amount of experimentation
“must not be unduly extensive.” Atlas Powder Co., v. E.I. DuPont De
Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.
Cir. 1984). The Patent and Trademark Office Board of Appeals
summarized the point well when it stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the
direction in which the experimentation should proceed
to enable the determination of how to practice a desired
embodiment of the invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
As stated by appellants (Brief, page 11) “[a]ppellants need not define exactly
those combinations of amino acids that yield a functional receptor when present in
the X positions, as those combinations, if any, that are not functional are outside the
scope of the claims [emphasis in original].” Here, all the examiner has established
is that some experimentation would be required to make and use other
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