Appeal No. 2001-2073
Application No. 09/098,799
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review we have reached the determinations which follow.
Looking first to the examiner's rejection of claim 6 under
35 U.S.C. § 112, first paragraph, we understand this rejection to
be based on lack of enablement. The first paragraph of 35 U.S.C.
§ 112 requires, inter alia, that the specification of a patent
enable any person skilled in the art to which it pertains to make
and use the claimed invention. Although the statute does not say
so, enablement requires that the specification teach those in the
relevant art to make and use the invention without "undue
experimentation." In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988). That some experimentation may be required
is not fatal; the issue is whether the amount of experimentation
required is "undue." Id. at 736-37, 8 USPQ2d at 1404.
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