Specification does not convey to a person having ordinary skill in the art that Leung had possession
of a process which would reduce resistivity and the carbon content of CVD films by post-treating the
films with a hydrogen plasma without biasing or otherwise applying high energy ions. Leung’s
involved claims are not supported by the written description of the original specification of the 143
Application and are unpatentable under 35 U.S.C. § 112, ¶ 1.
Enabling Disclosure
A.
Sandhu also argues that Leung’s involved claims are not supported by an enabling disclosure.
More specifically Sandhu argues that the CVD art is unpredictable (Paper 69, p. 6) and that certain
features of Leung’s involved claims are not described in Leung’s original disclosure (Paper 69, pp.
7-10).
B.
A patent application is required to “contain a written description of the invention, and of the
manner and process of making and using it ... 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, ¶ 1.
“To be enabling, the specification of the patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue experimentation.’” Plant Genetic Systems
N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339, 65 USPQ2d 1452, 1455 (Fed. Cir.2003);
Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 [42 USPQ2d 1001] (Fed. Cir. 1997)
(quoting In re Wright, 999 F.2d 1557, 1561 [27 USPQ2d 1510] (Fed. Cir. 1993)). Factors to be
considered in determining whether a disclosure would require undue experimentation 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, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
However, the specification need not teach, and preferably omits, what is well known in the art.
Spectra-Physics Inc. v. Coherent Inc., 827 F.2d 1524, 1534, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987);
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir.
1986).
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