Appeal No. 2002-2288
Application No. 09/198,727
In the Examiner’s Answer, the examiner asserts that the lack
of enablement is evidenced by the impossibility of determining
whether the claims are directed to a simulator or a controller
(Examiner’s Answer, page 7, lines 3-15); and the appellants have
not clarified the art to which the invention pertains (Id., page
7, lines 16-19).
We observe that a finding of lack of enablement is a legal
conclusion which is based on the facts of any particular
application. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
1369-70, 52 USPQ2d 1129, 1134 (Fed. Cir. 1999).
The first paragraph of 35 U.S.C. § 112 provides the standard
for the legal conclusion:
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, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.
This standard has been interpreted and applied by our
reviewing court in In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438,
1444 (Fed. Cir. 1991) as follows:
The first paragraph of 35 USC 112 requires, inter alia, that
the specification of the patent 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.
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