Appeal No. 2003-0936
Application No. 09/532,806
reasoning which is inconsistent with the contested
statement.
To satisfy the enablement requirement of 35 U.S.C. § 112,
first paragraph, for the full scope of contiguous nucleotide
sequences appellants claim,
. . . the specification [must] . . . enable any person
skilled in the art to which it pertains to make and use
the claimed invention. 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.” In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some
experimentation may be required is not fatal; the issue
is whether the amount of experimentation required is
“undue.” Id. at736-37, 8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir.
1991). As explained in In re Wands, 858 F.2d at 737, 8 USPQ2d
at 1404 (footnotes omitted), “Enablement is not precluded by the
necessity for some experimentation such as routine screening.”
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404, amplified the
statement with a quote from Ex parte Jackson, 217 USPQ2d 804, 807
(Bd. App. 1982)(emphasis added):
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides
a reasonable amount of guidance with respect to the
direction in which the experimentation should proceed.
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404, instructs (footnote
omitted):
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