Appeal 2007-0022
Application 10/148,935
PRINCIPLES OF LAW
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of
the invention provided in the specification of the
application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as
to the scope of enablement. If the PTO meets this
burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA
1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the
art to make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). “Enablement
is not precluded by the necessity for some experimentation . . . . However,
experimentation needed to practice the invention must not be undue
experimentation. The key word is ‘undue,’ not ‘experimentation.’” In re Wands,
858 F.2d at 736-737, 8 USPQ2d at 1404.
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