Appeal 2007-1594
Application 10/600,379
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,
first paragraph (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 (Fed. Cir. 1999); see also
Donald S. Chisum, 3 Chisum on Patents ' 7.01 (2002). “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 (Fed.
Cir. 2003); Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir.
1997); In re Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
AThe key word is >undue,= not experimentation.=@ Wands, 858 F.2d at 737, 8
USPQ2d at 1404 (citation omitted). 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. Id.
ANALYSIS
Turning first to the rejection of claim 11 under 35 U.S.C. § 112, first
paragraph, it is the Examiner’s contention that claim 11 is based on a disclosure
that would not have enabled one of ordinary skill to make or use the invention
without undue experimentation. For such a rejection to be sustained, it is
incumbent upon the Examiner to show that one of ordinary skill could not make
the invention without such undue experimentation. The Examiner has not raised
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