Appeal No. 2001-1306 Page 6
Application No. 08/100,019
have no support in the art and require supporting evidence
(answer, page 3). The Examiner further argues that the claimed
selective development of the second exposed portion involves
complex development methods that are not readily available or
obvious to one of ordinary skill in the art (answer, page 5).
We note that the first paragraph of 35 U.S.C. § 112
provides:
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...
to make and use the same....
As pointed out by our reviewing court, the specification, when
filed, must enable one skilled in the particular art to use the
invention without undue experimentation. In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). To be enabling,
the specification must teach those of ordinary skill in the art
"how to make and how to use the invention as broadly as it is
claimed." In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445
(Fed. Cir. 1991). Also see Spectra-Physics v. Coherent, 827 F.2d
1524, 1533, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987).
After a review of the specification and the claims, we find
that the specification does not describe with any specificity,
how the second exposed portions may be developed prior to
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