Appeal No. 2004-0291
Application No. 09/091,561
section 112, 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." Vaeck, 947 F.2d at 495, 20 USPQ2d at 1444; Wands, 858 F.2d at
736-37, 8 USPQ2d at 1404. Nothing more than objective enablement is required, and
therefore it is irrelevant whether this teaching is provided through broad terminology or
illustrative examples. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contains sufficient
information regarding the subject matter of the appealed claims as to enable one skilled
in the pertinent art to make and use the claimed invention. Factors to be considered by
the examiner in determining whether a disclosure would require undue experimentation
have been summarized by the board in Ex parte Forman, [230 USPQ 546, 547 (Bd Pat
App Int 1986)]. They include (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative
skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the
breadth of the claims. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed.
Cir. 1988).
In considering the enablement rejection before us for review, we find the
following passage from P.G. Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996) to be instructive.
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