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Patents / Biotechnology / US Biotechnology Practice |
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4.4 Enablement - Footnotes [43]
W.L.
Gore & Associates, Inc. v. Garlock,
721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
[44]
For example, in
Ex parte Jackson, 217 USPQ 804, the Board of Appeals referring to
Ansul v. Uniroyal,
169 USPQ 759 (2d Cir. 1971) and
In re Rainer, 146 USPQ 218 (CCPA 1965) pointed out that:
determination
of what constitutes undue experimentation in a given case requires the
application of a standard of reasonableness having regard to the nature of the
invention. The test is not merely quantitative, since a considerable amount of
experimentation is permissible, if it is merely routine or if the specification
in question provides a reasonable amount of guidance with respect to the
direction in which experimentation should proceed to enable determination of
how to practice a desired embodiment of the invention claimed.
[45]
In re Wright,
27 USPQ2d 1510 - developments after the filing date did not make a disclosure
enabling when the art was unpredictable at the time of filing. See also
In re Hogan,
194 USPQ 538 which held that the question of whether the scope of a claim was
commensurate with the disclosure also had to be determined as of the filing date.
[46]
See, for example, the decisions in
In re Gardner,
166 USPQ 138 (CCPA 1970) and
In re Bundy,
209 USPQ 48 (CCPA 1981), the former holding that undue experimentation was
needed for a method of treatment claim to determine the right dose for an
antidepressant and the latter distinguishing it to find that precise
information on dosing was not required for novel product claims.
[47]
A classic example of this is in
Consolidated Electric Light Company v. McKeesport Light Company,
159 US 465 (1895) ("the incandescent lamp patent"), where claims 1 and 2 related
to the use of carbonized fibrous material as the filament for an electric lamp
and claim 3 was construed as being confined to use of the material described in
the specification, namely, carbonized paper. Since it was found that only
certain specific fibers ( a small fraction of over six thousand that were
examined) had the required cell structure to be useful for the stated purpose,
claims 1 and 2 but not claim 3 were held to be invalid.
[48]
210 USPQ 689 (CCPA 1981).
[49]
8 USPQ2d 1400 (1988).
[50]
Ex Parte Forman, 230 USPQ 547.
[51]
947 F.2d 488, 20 USPQ 2d 1438 (Fed. Cir. 1991).
[52]
108 F.3d 1361, 42 USPQ2d 1001 (Fed. Cir. 1997).
[53]
In re Stephens,
529 F.2d 1343, 188 USPQ 659 (CCPA 1976).
Inre Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982).
[54]
Atlas
Powder Co. v. E.I. DuPont, 750
F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984).
[55]
166 USPQ 18 (CCPA 1970).
[56]
See, for example,
United
States v. Teletronics Inc.,
8 USPQ 2d 1217 (Fed. Cir. 1988), and
PPG
Industries v. Guardian Industries Corp.,
75 F.3d 1558, 37 USPQ2d 1619 (Fed. Cir. 1996), where the court held:
In
unpredictable art areas, this court has refused to find broad generic claims
enabled by specifications that demonstrate the embodiment of only one or a few
embodiments and do not demonstrate with reasonable specificity how to make and
use other potential embodiments across the full scope of the claim. ... [In
such cases undue experimentation is required] ... But the question of undue
experimentation is a matter of degree. The fact that some experimentation is
necessary does not preclude enablement.
The
fact that there was an error in one of the examples was excused in this case on
the ground that the error would not have required one skilled in the art to
carry out undue experimentation to realize what was wrong and put it right.
[57]
108 F.3d 1361 42 USPQ 1001 (Fed. Cir. 1997).
[58]
49 USPQ2d 1671 (Fed. Cir. 1999).
[59]
In re Hyatt, 218 USPQ 195 (Fed. Cir. 1983).
[60]
See, for example,
In re Corkill, 226 USPQ 1005. Indeed as long as the number of totally inoperative embodiments
falling within a claim remains relatively low, the inclusion of such
embodiments within the claim will not destroy the validity of the claim, at
least if those skilled in the art would know how to modify the failures to
secure something useful.
Atlas
Powder Co v. E.I. DuPont,
224 USPQ 409 (Fed. Cir. 1984). Similarly in
Decca
Ltd v. United States,
544 F.2d 1070, 191 USPQ 439 (Ct. Clms. 1976), cited in
National
Recovery Technologies v. Magnetic Separation Systems,
49 USPQ2d 1671 (Fed. Cir. 1999) it was held that:
The
mere fact that the system has some drawbacks or that under certain postulated
conditions it may not work ... does not detract from the operability of the
disclosed equipment to perform its described function.
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