Appeal No. 95-1711
Application No. 08/063,819
It is well established that the examiner has the “burden
of giving reasons, supported by the record as a whole, why the
specification is not enabling. . . . Showing that the
disclosure entails undue experimentation is part of the PTO’s
initial burden. . . .” In re Angstadt, 537 F.2d 498, 504, 190
USPQ 214, 219 (CCPA 1976). In determining whether any given
disclosure would require undue experimentation to make the
claimed subject matter, the examiner must consider not just
the breadth of the claims, as here, but also the quantity of
experimentation necessary, the amount of direction or guidance
presented, the presence or absence of working examples, the
nature of the invention, the state of the prior art, the
relative skill of those in the art, and the predictability or
unpredictability of the art. Determining enablement is a
question of law based on factual findings. In re Vaeck, 947
F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991). Here,
it is apparent that the examiner has not made the requisite
factual findings to support a conclusion that the present
disclosure would require undue experimentation to carry out
the claimed process. While the examiner contends that
injection molding compounds such as concrete, metallics,
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007