Appeal No. 96-0550
Application 07/960,148
561, 563 (CCPA 1982). Once this is done, the burden shifts to
the appellants to rebut the conclusion of the examiner regarding
enablement by presenting evidence to prove that the disclosure is
enabling. Id. at 1561, 27 USPQ2d at 1513; In re Eynde, 480
F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973); In re Doyle, 482
F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert. denied, sub
nom. Doyle v. Comm'r of Patents, 416 U.S. 935 (1974).
Additionally, as the court in In re Gaubert, 524 F.2d 1222, 1226,
187 USPQ 664, 667 (CCPA 1975) stated:
[t]o satisfy § 112, the specification disclosure must
be sufficiently complete to enable one of ordinary
skill in the art to make the invention without undue
experimentation, although the need for a minimum amount
of experimentation is not fatal.... Enablement is the
criterion, and every detail need not be set forth in
the written specification if the skill in the art is
such that the disclosure enables one to make the
invention.
The determination of what constitutes undue experimentation in a
given case requires the application of a standard of
reasonableness, having regard for the nature of the invention and
the state of the art. See, In re Wands, 858 F.2d 731, 736, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). The provisions of 35 U.S.C.
§ 112, first paragraph, do not require that the specification
contain what is well known to those skilled in the art.
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,
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