Appeal 2007-1032
Application 10/062,920
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). However, “[t]he scope of enablement
. . . is that which is disclosed in the specification plus the scope of what
would be known to one of ordinary skill without undue experimentation.”
National Recovery Technols. Inc. v. Magnetic Separation Sys., Inc., 166
F.3d 1228, 1232, 49 USPQ2d 1671, 1675-76 (Fed Cir. 1999).
Moreover, a claim does not lack enablement merely because it
encompasses inoperative embodiments. Atlas Powder Co. v. E.I. DuPont De
Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 414 (Fed. Cir. 1984).
Thus, claims to a method do not lack enablement merely because a difficult-
to-achieve outcome is encompassed, but not required, by the claims. See In
re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999)
(claims encompassing achieving full head of hair held enabled by evidence
showing three-fold increase in hair number, filling-in, and fuzz).
We agree that the claims encompass inhibiting infection by E. canis.
All that they require, however, is inducing some degree of immune
response, such as generating antibodies.
The Specification provides the amino acid sequences of the proteins
recited in the claims. One of the claimed proteins has been demonstrated to
react with antiserum from a previously infected dog (Specification 42;
Figure 2), thus suggesting that it would elicit an immune response in a
subject. The Specification discloses that all of the proteins recited in the
claims “are homologous to the omp-1 multiple gene family of E.
chaffeensis” (Specification 50:11-12), and that this “family of homologous
genes encoding outer membrane proteins with molecular masses of 28-kDa
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