Page:Amgen Inc. v. Sanofi.pdf/17

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Cite as: 598 U. S. ____ (2023)
13

Opinion of the Court

use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation” with different starches. Id., at 257. To be sure, the Court held, Perkins was entitled to its patent on the specific starch glue it had invented. See id., at 255. The specification described that glue’s “characteristic ingredient” with “particularity.” Ibid. But just as Morse could not claim all means of telegraphic communication, and Sawyer and Man could not claim all fibrous and textile materials for incandescence, Perkins could not claim all starch glues made from whatever starch happened to perform as well as animal glue. To hold otherwise, the Court said, “would extend the monopoly beyond the invention.” Id., at 258.

Our decisions in Morse, Incandescent Lamp, and Holland Furniture reinforce the simple statutory command. If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable. See §112(a); see also Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 419 (1908) (“[T]he claims measure the invention.”).

That is not to say a specification always must describe with particularity how to make and use every single embodiment within a claimed class. For instance, it may suffice to give an example (or a few examples) if the specification also discloses “some general quality … running through” the class that gives it “a peculiar fitness for the particular purpose.” Incandescent Lamp, 159 U. S., at 475. In some cases, disclosing that general quality may reliably enable a person skilled in the art to make and use all of what is