Appeal No. 1997-2510
Application No. 07/868,539
defined by the claims.” In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97
(CCPA 1976). As set forth in Wertheim, 541 F.2d at 262, 191 USPQ at 96:
The function of the description requirement is to ensure that
the inventor had possession, as of the filing date of the application
relied on, of the specific subject matter later claimed by him; how
the specification accomplishes this is not material. In re Smith, 481
F.2d 910, 178 USPQ 620 (CCPA 1973), and cases cited therein. It
is not necessary that the application describe the claim limitations
exactly, In re Lukach, [442 F.2d 967, 169 USPQ 795 (1971]… but
only so clearly that persons of ordinary skill in the art will recognize
from the disclosure that appellants invented processes including
those limitations. In re Smythe, 480 F.2d 1376, 1382, 178 USPQ
279, 284 (CCPA 1973).
The primary consideration is factual and depends on the
nature of the invention and the amount of knowledge imparted to
those skilled in the art by the disclosure.
B. Enablement:
In considering the issue of enablement, we note that in order to satisfy the
enablement requirement of 35 U.S.C. § 112, first paragraph, a patent application
must adequately disclose the claimed invention so as to enable a person skilled
in the art to practice the invention at the time the application was filed without
undue experimentation. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
1371-72, 52 USPQ2d 1129, 1136 (Fed. Cir. 1999). However, “nothing more than
objective enablement is required, and therefore it is irrelevant whether this
teaching is provided through broad terminology or illustrative examples.” In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). As set forth
in In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993):
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007