Appeal No. 96-1603
Application 08/057,989
227, 232 (CCPA 1973), cert. denied, sub nom. Doyle v. Comm’r
Pats., 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 constitute 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, 736-737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); Ex
parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
In our view, the examiner has not met his burden of
producing reasons to show that a person would not know how to
operate a common element such as a hydrostatic bearing. In
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