Appeal No. 2004-2201 Page 8
Application No. 09/788,476
28 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991); In re Vaeck, 947 F.2d at
496, 20 USPQ2d at 1445. Enablement is lacking in those cases, the court
has explained, because the undescribed embodiments cannot be made,
based on the disclosure in the specification, without undue
experimentation. But the question of undue experimentation is a matter of
degree. The fact that some experimentation is necessary does not
preclude enablement; what is required is that the amount of
experimentation ‘must not be unduly extensive.’ Atlas Powder Co., v. E.I.
DuPont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413
(Fed. Cir. 1984). The Patent and Trademark Office Board of Appeals
summarized the point well when it stated:
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 to enable the
determination of how to practice a desired embodiment of
the invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
What is missing is an analysis from the examiner as to why the amount of work
required to practice the invention of claim 1 throughout its scope would be considered
undue instead of routine. It is insufficient for an examiner to merely point out that it is
necessary to “screen a large quantity of clinical samples.” Examiner’s Answer, page 11.
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