Appeal No. 2000-0391
Application No. 08/553,773
Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1213, 18
USPQ2d 1016, 1027 (Fed. Cir. 1991). Accordingly, the scope of
the claim must be considered in any analysis under section 112.
Therefore, the enablement disclosure may be commensurate in scope
with narrower claims while not sufficiently enabling for claims
of a broader scope.
The scope of each group of claims considered in the Decision
is very different, as noted by appellants themselves in the Brief
(pages 13-14; see the Decision, page 9). The scope of the claims
included in the affirmance of the examiner’s rejection did not
specify the dye, i.e., the dye and polymer matrix must both be
determined for any given analyte (Decision, page 8). Similarly,
the scope of the claims included in the reversal of the
examiner’s rejection was much more narrow, i.e., the dye was
specified (Decision, page 9). Accordingly, the scope of
enablement required varied with the scope of the claims.
Appellants have not cited any legal precedent or reasoning
that supports their argument. Appellants’ citation of In re
Bundy, 209 USPQ 48 (CCPA 1981)(Request, page 2), does not appear
to support their argument since the holding in this decision is
mainly directed to best mode and utility issues, not enablement
for the varying scope of claims as presented herein. As
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