Appeal No. 2001-2316 Page 5
Application No. 08/187,879
35 U.S.C. § 112, first paragraph requires appellants’ specification to
contain a written description of the claimed invention and the manner and
process of making and using that invention in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which that invention pertains,
or with which it is most nearly connected, to make and use that invention.
Although not explicitly stated in the first paragraph of 35 U.S.C. § 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.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371-72,
52 USPQ2d 1129, 1136 (Fed. Cir. 1999); In re Vaeck, 947 F.2d 488, 495, 20
USPQ2d 1438, 1444 (Fed. Cir. 1991); In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988).
When rejecting a claim under the enablement requirement of 35 U.S.C.
§ 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. If the examiner meets this burden, the burden then shifts to
appellants to provide suitable proofs indicating that the specification is indeed
enabling. In re Marzocchi, 439 F.2d 220, 223-224, 169 USPQ 367, 369-70
(CCPA 1971). To assist the examiner in meeting his initial burden of setting forth
a reasonable explanation as to why he believes the scope of the claimed
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