Appeal No. 1996-2209
Application No. 08/031,346
note that all of the factors need not be reviewed when determining whether a disclosure is
enabling. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027
(Fed. Cir.), cert. denied, 112 S. Ct. 1696 (1991)(noting that the Wands factors "are illustrative,
not mandatory. What is relevant depends on the facts.").
In this regard, the following passage from PPG Indus. Inc. v. Guardian Indus. Corp., 75
F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996) is instructive here.
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).
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