Appeal No. 2001-2524 Page 5
Application No. 08/369,295
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). We note, however, that “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). 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.
Whether the disclosure is enabling, is a legal conclusion based on several
underlying factual inquiries. See In re Wands, 858 F.2d 731, 735, 736-37, 8
USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988). As set forth in Wands, 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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