Appeal No. 2005-0973
Application No. 09/740,669
(Fed. Cir. 1993). More specifically, “[t]o be enabling under §112,
a patent must contain a description that enables one skilled in the
art to make and use the claimed invention.” Atlas Powder Co. v.
E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409,
413 (Fed. Cir. 1984) (citing Raytheon Co. v. Roper Corp., 724 F.2d
951, 960, 220 USPQ 592, 599 (Fed. Cir. 1983)). “That some
experimentation is necessary does not preclude enablement; the
amount of experimentation, however, must not be unduly extensive.”
Id., 224 USPQ at 413.
Here, the appellants’ specification discloses that “[p]acket
-in-flight field 624 can be configured to indicate if a packet is
in-flight.” (Spec. at 14.) The specification adds that “[a] packet
is considered to be in-flight when the packet is being processed,
such as if a packet is being read out of memory, being sent out
onto the bus, and the like.” (Id.)
In view of the aforementioned disclosures, I conclude that one
skilled in the art would have understood that the claimed “in-
flight field” indicates whether a packet is being processed.
With such an understanding, I am unpersuaded that such a one would
have been unable to make and use, without undue experimentation,
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