Appeal No. 2001-1686 Page 5
Application No. 08/363,998
some of the disclosed embodiments of the claimed invention, but argues that
other disclosed embodiments would not be enabled. A claim may, however,
encompass inoperative embodiments and still meet the enablement requirement
of 35 U.S.C. § 112, first paragraph. See Atlas Powder Co. v. E.I. Du Pont De
Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984), In
re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 218 (CCPA 1976), In re Cook,
439 F.2d 730, 732, 169 USPQ 298, 300 (CCPA 1971).
In In re Cook, 439 F.2d 730, 169 USPQ 298 (CCPA 1971), one of the
issues addressed by the court was whether claims to an “optical objective of the
‘zoom’ type” met the requirements of 35 U.S.C. § 112, first paragraph, on the
grounds that the “disclosure was said to be insufficient because it would require
many months for a skilled lens designer, working with the aid of a computer, to
design, within the ambit of the claims, a satisfactory zoom lens assembly other
than the six specifically disclosed.” Id. at 732, 169 USPQ at 300.
In finding that the disclosure was sufficient with regard to that particular
basis of rejection, the court stated that
many patented claims read on vast numbers of inoperative
embodiments in the trivial sense that they can and do omit “factors
which must be presumed to be within the level of ordinary skill in
the art,” and therefore read on embodiments in which such factors
may be included in such a manner as to make the embodiment
operative rather then inoperative.
1 To the best of our knowledge, the question of whether the specification has to
enable all of the disclosed uses of a method claim has not been addressed by
our reviewing court, the Court of Appeals for the Federal Circuit, nor its
predecessor court, the Court of Custom and Patent Appeals. Because we need
not reach it here, we decline to do so.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007