Vasilyeva also testifies that she reviewed the 143 Specification6 “to determine if the disclosure
therein was sufficient to enable one skilled in the art to make and use the invention defined in Leung
claims 13, 19, 20 and 26.” Based upon this review, she expresses the opinion that one skilled in the
art would not have been able to make and use the subject matter of Leung claims 13, 19, 20 and 26.
SX 1015, pp. 7-8, ¶ 11. Vasilyeva appears to bottom her opinion on the purported absence of certain
express teachings from the 143 Specification. Vasilyeva testifies that the 143 Specification does not
teach or describe the use of a hydrogen plasma to reduce carbon content and decrease resistivity. SX
1015, pp. 8-10, ¶¶ 12-14. She also testifies that the 143 Specification does not teach any method to
reduce carbon content and decrease resistivity without voltage biasing the substrate and that biasing
is understood to be a required step to reduce the carbon content and resistivity. SX 1015, pp. 10-11,
¶¶ 15-17. Vasilyeva summarizes her testimony stating that in order for one of ordinary skill to have
practiced the claimed invention based on the disclosures of 143 Application, an extraordinary amount
of experimentation would have been required. SX 1015, p. 15, ¶ 24.
We also do not credit Vasilyeva’s testimony that undue experimentation would be required.
The specification is written to enable those skilled in the art to practice the invention. W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed. Cir. 1983). The
specification, however, need not teach what is well known in the art. Spectra-Physics, 827 F.2d at
1534, 3 USPQ2d 1737 at 1743; Hybritech, 802 F.2d at 1384, 231 USPQ at 94. In other words a
specification is not rendered non-enabling merely because certain information fails to be described in
the specification. It must also be shown that the person having ordinary skill in the art could only have
filled in those gaps in the disclosure using undue experimentation. Vasilyeva’s testimony does not
provide a basis beyond the alleged absence of disclosure to support her conclusion that undue
experimentation would be necessary. For example, we note that none of the alleged missing features
have been shown or said not to be conventional or well known in the CVD art. Vasilyeva’s opinion
on undue experimentation is conclusory and not entitled to any weight.
6 Vasilyeva’s testimony was expressly addressed to the specification of the great-grandparent
application. However, since the original specifications of the great-grandparent and the 143 Application appear to be
and are admitted to be identical, we have construed the testimony as applying to the 143 Application as well. See F6
and F7, above. We need not refer to the parent and grandparent applications since Leung has disclaimed reliance on
whatever additional description is present in those applications. Paper 104, p. 15.
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