Appeal No. 1999-1907
Application No. 08/690,409
curable silicone material" or that the complete chemical
identity of Castall S-1332 is not described in the specification
is insufficient to satisfy the examiner's initial burden of
proof as to lack of written description under 35 U.S.C. § 112,
first paragraph.
We now address the rejection to the extent that it may be
based on lack of enablement. "Although not explicitly stated in
section 112, to be enabling, the specification of a patent must
teach those skilled in the art how to make and use the full
scope of the claimed invention without 'undue experimentation.'"1
In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993). As long as "undue experimentation" is not involved,
a specification would comply with the enablement requirement of
the statute even if a reasonable amount of routine
experimentation is necessary to practice the claimed invention.
1 The question of whether making and using the invention
would have required "undue experimentation" depends on several
underlying factual inquiries including: (1) the quantity of
experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working
examples; (4) the nature of the invention; (5) the state of the
prior art; (6) the relative skill of those in the art; (7) the
predictability or unpredictability of the art; and (8) the
breadth of the claims. In re Wands, 858 F.2d 731, 735, 736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).
6
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