Appeal No. 1999-1703
Application No. 08/313,194
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." Vaeck, 947 F.2d at 495, 20 USPQ2d
at 1444; Wands, 858 F.2d at 736-37, 8 USPQ2d at 1404; In re Fisher, 427 F.2d 833,
839, 166 USPQ 18, 24 (CCPA 1970) (the first paragraph of section 112 requires that the
scope of protection sought in a claim bear a reasonable correlation to the scope of
enablement provided by the specification). Nothing more than objective enablement is
required, and therefore it is irrelevant whether this teaching is provided through broad
terminology or illustrative examples. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971). An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure contained
sufficient information regarding the subject matter of the appealed claims as to enable one
skilled in the pertinent art to make and use the claimed invention. In order to establish a
prima facie case of lack of enablement, the examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the claimed invention. See In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of protection provided by a
claim is not adequately enabled by the disclosure). See also In re Morehouse, 545 F2d
162, 192 USPQ 29 (CCPA 1976). The threshold step in resolving this issue is to
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