Appeal No. 1999-0862
Application 08/764,275
Cir. 1999):
“[t]he statutory basis for the enablement requirement is
found in Section 112, Para. 1, which provides relevant
part that:
The specification shall contain a written
description of the invention, and of the manner and
process of making and using it, in such full, clear,
concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with
which it is most nearly connected, to make and use
the same . . . .
35 U.S.C. § 112, Para. 1 (1994).”
“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’.”
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)).
Whether claims are sufficiently enabled by a disclosure in a
specification is determined as of the date that the patent
application was first filed, see Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986). We have held that a patent specification complies
with the statute even if a “reasonable” amount of routine
experimentation is required in order to practice a claimed
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