Appeal No. 1998-2707
Application No. 08/586,081
The first paragraph of 35 U.S.C. 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art
to make and use the invention without ‘undue experimentation.’ In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is ‘undue.’ Id. at 736-37, 8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
The question is whether the disclosure is sufficient to enable those skilled in the art
to practice the claimed invention; the specification need not disclose what is well known in
the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d
1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (citing In re Myers, 410 F.2d 420, 161
USPQ 668 (CCPA 1969)). "A patent need not teach, and preferably omits, what is well
known in the art." Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3
USPQ2d 1737, 1743 (Fed. Cir. 1987). "Not every last detail is to be described, else
patent specifications would turn into production specifications, which they were never
intended to be." In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962).
The examiner bears the initial burden of setting forth a reasonable explanation as to
why the scope of protection provided by the claims is thought to be not adequately enabled
by the description of the invention provided in the specification. If that burden is met, the
burden then shifts to the applicant to provide proof that the specification is indeed
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