Appeal No. 2002-2029
Application No. 09/440,037
not limited to any particular degree of maturation, provided
that the material steps of the process are carried out. In this
regard, it has long been held that undue breadth is not
indefiniteness. See, e.g., In re Goffe, 526 F.2d 1393, 1397-98,
188 USPQ 131, 135 (CCPA 1975).
For these reasons, we cannot uphold the examiner’s
rejection on this ground.
Rejections under 35 U.S.C. § 101
& 35 U.S.C. § 112, ¶1
The questions of whether a specification provides an
enabling disclosure under 35 U.S.C. § 112, ¶1, and whether an
application satisfies the utility requirement of 35 U.S.C. § 101
are closely related.4 In re Swartz, 232 F.3d 862, 863, 56 USPQ2d
1703, 1703 (Fed. Cir. 2000). To satisfy the enablement
requirement of 35 U.S.C. § 112, ¶1, the specification must
adequately disclose the claimed invention so as to enable one
skilled in the relevant art to practice the invention at the
time the application was filed without undue experimentation.
Swartz, 232 F.3d at 863, 56 USPQ2d at 1703-04. To satisfy the
utility requirement of 35 U.S.C. § 101, the invention must be
operable to achieve useful results. Id.
4 The examiner’s underlying reasons for both rejections are
identical. (Answer, pp. 4-5.) Thus, if the rejection under 35
6
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