The ’350 And ’907 Applications Satisfy The How-To-Make
11 Requirement For Embodiments Within Counts 2 And 3
12 a. Legal Standards
13 The test for enablement is “whether one reasonably skilled in the art could make or
14 use the invention from the disclosures in the patent coupled with information known in the art
15 without undue experimentation.” United States v. Telectronics Inc., 857 F.2d 778, 785 (Fed. Cir.
16 1988). “[R]ecognition of the structure of a chemical compound ordinarily provides those skilled
17 in the art with some information as to its synthesis.” Martin v. Johnson, 454 F.2d 746, 752
18 (CCPA 1972). Thus, the structure of a compound alone can be sufficient enabling disclosure.
19 Martin, 454 F.2d at 752; Sugano v. Goeddel, Interference 105,334, Paper 109, at 40-42, 45
20 (BPAI Sep. 29, 2008) (non-precedential), rev’d on other grounds, 617 F.3d 1350 (Fed. Cir.
21 2010); Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 921 (Fed. Cir. 2010) (stating that
22 a “description of a chemical compound without description of how to make and use it” may be
23 enabled if making and using it is in the prior art).
11 Requirement For Embodiments Within Counts 2 And 3
12 a. Legal Standards
13 The test for enablement is “whether one reasonably skilled in the art could make or
14 use the invention from the disclosures in the patent coupled with information known in the art
15 without undue experimentation.” United States v. Telectronics Inc., 857 F.2d 778, 785 (Fed. Cir.
16 1988). “[R]ecognition of the structure of a chemical compound ordinarily provides those skilled
17 in the art with some information as to its synthesis.” Martin v. Johnson, 454 F.2d 746, 752
18 (CCPA 1972). Thus, the structure of a compound alone can be sufficient enabling disclosure.
19 Martin, 454 F.2d at 752; Sugano v. Goeddel, Interference 105,334, Paper 109, at 40-42, 45
20 (BPAI Sep. 29, 2008) (non-precedential), rev’d on other grounds, 617 F.3d 1350 (Fed. Cir.
21 2010); Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 921 (Fed. Cir. 2010) (stating that
22 a “description of a chemical compound without description of how to make and use it” may be
23 enabled if making and using it is in the prior art).