Appeal No. 1999-1417
Application 08/268,730
The statutory basis for the enablement requirement is found in 35 U.S.C. § 112, first
paragraph, which provides 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 . . ..
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.”
Whether claims are sufficiently enabled by a disclosure in a specification is determined as
of the date that the patent application was first filed. Enzo Biochem, Inc. v. Calgene, Inc.,
188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135 (Fed. Cir. 1999).
Here, the examiner argues that claims 76 through 80 are based on a non-enabling
disclosure. According to the examiner, any person skilled in the art would have faced
undue experimentation in determining how to practice the full scope of applicants’ claimed
invention. In setting forth this rejection, the examiner cites In re Wands, 858 F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988), where the court enumerated a number of factors
which may be considered in determining whether a disclosure would require undue
experimentation. These factors are:
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.
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