Appeal No. 2005-0838
Application No. 10/174,414
It is well established that the specification must teach those skilled in the art to
make and use the full scope of the claimed invention without undue experimentation.
Enzo Biochem Inc. v. Calgene Inc., 188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135
(Fed. Cir. 1999); Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365, 42
USPQ2d 1001, 1004 (Fed. Cir.) cert. denied, 118 S. Ct. 397 (1997); PPG Ind., Inc. v.
Guardian Ind. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996);
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re
Vaeck, 947 F.2d 488, 495-96, 20 USPQ2d 1438, 1444-45 (Fed. Cir. 1991). Thus, the
scope of the claims must bear a reasonable correlation to the scope of enablement
provided by the specification to those skilled in the art. In re Fisher, 427 F.2d 833, 839,
166 USPQ 18, 24 (CCPA 1970). The examiner may reject the claims as being based on
a non-enabling disclosure when s/he has reason to conclude that one skilled in the art
would be unable to carry out the claimed invention. In re Buchner, 929 F.2d 660, 661,
18 USPQ2d 1331, 1332 (Fed. Cir. 1991); In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971).
Here, the examiner points out, and the appellants do not disagree, that the
claims are directed to the prevention of an indeterminate number of inflammatory
conditions and immune disorders. Answer, pp. 3-8. The appellants, however, contend
that because (i) the examiner has acknowledged that teachings of the specification
would have enabled one skilled in the art to treat said conditions and disorders using
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