Appeal 2007-1434
Application 10/610,718
prior art reference may anticipate when the claim limitations not expressly found in
that reference are nonetheless inherent in it. Id.
“The enablement provision of the Patent Act requires that the patentee
provide a written description of the invention ‘in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to make and use the same.’ 35 U.S.C. § 112, & 1
(2000). The purpose of this requirement is to ensure that ‘the public knowledge is
enriched by the patent specification to a degree at least commensurate with the
scope of the claims.’ Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc.,
166 F.3d 1190, 1195-96, 49 USPQ2d 1671, 1675 (Fed. Cir. 1999)(citation
deleted). Accordingly, we have held that the specification must provide sufficient
teaching such that one skilled in the art could make and use the full scope of the
invention without undue experimentation. CFMT, Inc. v. Yieldup Int’l Corp., 349
F.3d 1333, 1338, 68 USPQ2d 1940, 1944(Fed. Cir. 2003); Genentech, Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1365 42 USPQ2d 1001, 1004(Fed. Cir. 1997); In re
Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1400, 1404(Fed. Cir. 1988). The key
word is ‘undue,’ not experimentation. Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
That is, the specification need only teach those aspects of the invention that one
skilled in the art could not figure out without undue experimentation. See, e.g.,
Nat’l Recovery Techs., 166 F.3d at 1196, 49 USPQ2d at 1675 (“The scope of
enablement . . . is that which is disclosed in the specification plus the scope of what
would be known to one of ordinary skill in the art without undue
experimentation.”); Wands, 858 F.2d at 736-37, 8 USPQ2d at 1404 (“Enablement
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