Appeal Number: 2007-0133
Application Number: 10/223,466
Claims 1 through 40 rejected under 35 U.S.C. § 112, first paragraph, as not
enabling a person of ordinary skill in the art to make and use the claimed subject
matter from the original disclosure.
The examiner contends the specification does not teach precisely how to make
and use the invention. (Final Rejection 3). This is not the criterion for
enablement.
Any analysis of whether a particular claim is supported by the disclosure in an
application requires a determination of whether that disclosure, when filed,
contained sufficient information regarding the subject matter of the claims as to
enable one skilled in the pertinent art to make and use the claimed invention. The
standard for determining whether the specification meets the enablement
requirement was cast in the Supreme Court decision of Mineral Separation v.
Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the
experimentation needed to practice the invention undue or unreasonable? That
standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the
term "undue experimentation," it has been interpreted to require that the claimed
invention be enabled so that any person skilled in the art can make and use the
invention without undue experimentation. Id. See also United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988)
("The test of enablement is whether one reasonably skilled in the art could make or
use the invention from the disclosures in the patent coupled with information
known in the art without undue experimentation."). A patent need not teach, and
preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661,
18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal
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