Appeal No. 2003-0124
Application No. 09/487,832
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
disclosure in a specification is determined as of the date that
the patent application was first filed, see Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986),. . . Our reviewing court has held that a
patent specification complies with the statute even if a
"reasonable" amount of routine experimentation is required in
order to practice a claimed invention, but that such
experimentation must not be "undue." See, e.g., In re Wands,
55
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007