Appeal No. 1998-2265
Application No. 08/498,482
“Although not explicitly stated in section 112, 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.’” In re 3
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993). As long as “undue experimentation” is not involved, a
specification would comply with the enablement requirement of
the statute even if a reasonable amount of routine
experimentation is necessary to practice the claimed
invention. Enzo Biochem Inc. v. Calgene, 188 F.3d 1362, 1371,
52 USPQ2d 1129, 1135 (Fed. Cir. 1999). That is, even “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
3The question of whether making and using the invention
would have required “undue experimentation” depends on several
underlying factual inquiries including: (1) the quantity of
experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working
examples; (4) the nature of the invention; (5) the state of
the prior art; (6) the relative skill of those in the art; (7)
the predictability or unpredictability of the art; and (8) the
breadth of the claims. In re Wands, 858 F.2d 731, 735,
736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).
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