Appeal No. 2004-0587
Application 09/054,304
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’.” Genetech, 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., Wands, 858 F.2d
at 736-37, 8 USPQ2d at 1404 (“Enablement is not precluded by the
necessity for some experimentation . . . . However,
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