Appeal No. 1998-2010
Application No. 08/542,861
35 U.S.C. § 112, first paragraph
Claims 1, 5, 7-11, 17-25, 27-30 and 32-37 stand rejected under 35 U.S.C.
§ 112, first paragraph as based on a disclosure which does not enable the invention as
claimed. The examiner indicates that the specification fails to disclose both how to make
and use compounds within the claim scope.
"To be enabling, the specification of a patent must teach those skilled in the art how
to make and use the full scope of the claimed invention without 'undue experimentation.'"
[Emphasis added.] Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365, 42
USPQ2d 1001, 1004 (Fed. Cir.1997) (quoting In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)). Conversely, the first paragraph of Section 112
requires that the scope of protection sought in a claim bear a reasonable correlation to the
scope of enablement provided by the specification.
In addition, analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure contains sufficient
information regarding the subject matter of the appealed claims as to enable one skilled in
the pertinent art to make and use the claimed invention. In order to establish a prima facie
case of lack of enablement, the examiner must provide a reasonable explanation as to why
the scope of protection provided by a claim is not adequately enabled by the disclosure. In
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