Appeal No. 1999-0245
Application No. 08/720,268
Enablement
We do not sustain the rejection of claims 1 through 5, 8,
11, 14, 16, 18, 19, and 21 under 35 U.S.C. § 112, first
paragraph, as containing subject matter which is not enabled by
the specification.
To be enabling under the first paragraph of 35 U.S.C. § 112,
a disclosure must contain a description that enables one skilled
in the art to make and use the claimed invention. That some
experimentation is necessary does not preclude enablement; the
amount of experimentation, however, must not be unduly extensive.
See Atlas Powder Co. v. E.I. dupont de Nemours & Co. , 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). As the court in
In re Gaubert, 524 F.2d 1222, 1226, 187 USPQ 664, 667 (CCPA 1975)
stated:
To satisfy § 112, the specification disclosure must be
sufficiently complete to enable one of ordinary skill
in the art to make the invention without undue
experimentation, although the need for a minimum amount
of experimentation is not fatal * * *. Enablement is
the criterion, and every detail need not be set forth
in the written specification if the skill in the art is
such that the disclosure enables one to make the
invention.
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