Appeal No. 2002-1630 Page 12
Application No. 09/175,713
[t]he test of enablement is whether one reasonably skilled in the art
could make and use the invention from the disclosures in the
application coupled with information known in the art without undue
experimentation. The enablement requirement does not require
that the disclosure provide any type of prediction with respect to the
end results obtained from practicing the invention, which is what
Examiner indicates is missing from the disclosure. In the instant
case, Appellants have provided a detailed road map to enable one
of ordinary skill in the art to practice the invention without undue
experimentation. Appellants therefore submit that the “use” aspect
of the claimed invention has also been met.
Appeal Brief, pages 12-13.
With respect to claims 6-9, Appellants argue that “[t]he narrow subset of
modified chemokines in claims 6-9 are defined by SEQ ID NOs and ATCC
accession numbers that are disclosed in the specification and therefore enable
one of ordinary skill in the art to practice the invention claimed.” Appeal Brief,
page 13.
The examiner bears the initial burden of showing that a claimed invention
is not enabled. See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993). “Although the statute does not say so, enablement
requires that the specification teach those in the art to make and use the
invention without ‘undue experimentation.’ . . . That some experimentation may
be required is not fatal; the issue is whether the amount of experimentation
required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444
(Fed. Cir. 1991) (emphasis in original).
“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
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