Appeal No. 2004-1829
Application No. 09/887,273
objective truth of the statements contained therein
which must be relied on for enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). Thus, it is only upon the advancement of acceptable
reasoning on the part of the examiner that the burden of proving
enablement shifts to the appellants. In re Strahilevitz, 668
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
“Although not explicitly stated in 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.’”1 In re Wright, 999
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). As long
as “undue experimentation” is not involved, a specification
would comply with the enablement requirement of the statute even
if a reasonable amount of routine experimentation is necessary
to practice the claimed invention. Enzo Biochem Inc. v.
1 The question of whether making and using the invention
would have required “undue experimentation” depends on several
underlying factual inquiries including: (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, 735, 736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).
4
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