Appeal No. 1998-2587
Application No. 08/451,993
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
The examiner has pointed to several problems that might be encountered
by a skilled artisan who tried to make and use certain compounds encompassed
by the claims. The gist of the examiner’s reasoning is that the claims encompass
inoperative embodiments and therefore a skilled artisan could no t make and use
each and every compound encompassed by the claims without undue
experimentation.
The enablement standard imposed by the examiner is more stringent than
is supported by the case law. “The fact that some experimentation is necessary
does not preclude enablement. . . . ‘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.’” PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558, 1564, 37
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