Appeal No. 2001-0931 Page 5
Application No. 09/104,476
Furthermore, to satisfy the enablement requirement of 35 U.S.C. § 112,
first paragraph, a patent application must adequately disclose the claimed
invention so as to enable a person skilled in the art to practice the invention at
the time the application was filed without undue experimentation. Enzo
Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371-72, 52 USPQ2d 1129, 1136
(Fed. Cir. 1999). As set forth in In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993):
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.
To assist the fact finder in meeting his initial burden of setting forth a
reasonable explanation as to why he believes the scope of the claimed invention
is not adequately enabled by the description, our appellate reviewing court has
outlined a number of factors that should be considered. As set forth in In re
Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400, 1402, 1404
(Fed. Cir. 1988), the factors to be considered in determining whether a claimed
invention is enabled throughout its scope without undue experimentation include
the quantity of experimentation necessary, the amount of direction or guidance
presented, the presence or absence of working examples, the nature of the
invention, the state of the prior art, the relative skill of those in the art, the
predictability or unpredictability of the art, and the breadth of the claims.
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