Appeal No. 2001-1124
Application 08/885,468
OPINION
With full consideration have been given to the subject
matter on appeal, the Examiner’s rejections and arguments of
Appellant and Examiner, for the reasons stated infra, we reverse
the Examiner’s rejection of claims 10 and 11 under 35 U.S.C. §
112, first paragraph.
As noted by our reviewing court in Enzo v. Calgene, 188 F.3d
1362, 1371, 52 USPQ2d 1129, 1135 “[t]he statutory basis for the
enablement requirement is found in Section 112, Para. 1, which
provides in relevant part that:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains,
or with which it is most nearly connected, to make and use
the same . . . .
35 U.S.C. § 112, Para. 1 (1994).” “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’.” Genentech, Inc. v. Novo Nordisk, A/S
108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997)
(quoting In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993)). Whether claims are sufficiently enabled by a
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