Appeal No. 2001-2584 Page 5
Application No. 08/462,817
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, “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.
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
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