Appeal No. 1998-2043
Application No. 08/606,601
USPQ2d 1737, 1743 (Fed. Cir. 1987). "Not every last detail is to be described, else
patent specifications would turn into production specifications, which they were never
intended to be." In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962).
With the above-noted guidelines in mind, we do not agree that lack of enablement
has been established. The examiner bears the initial burden of setting forth a reasonable
explanation as to why the scope of protection provided by the claims is thought to be not
adequately enabled by the description of the invention provided in the specification. If that
burden is met, the burden then shifts to the applicant to provide proof that the specification
is indeed enabling. In re Wright, 999 F.2d 1557, 1561-62, 1510, 1513 (Fed. Cir. 1993).
However, the statement of the rejection (Final Rejection, page 2) does little to meet
the initial burden. The rejection merely points out that there is “no disclosure” of the
structure of certain mechanisms, which, without more, does not show lack of enablement.
“Whether undue experimentation is needed is not a single, simple factual determination,
but rather is a conclusion reached by weighing many factual considerations.” In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). The factors to be considered
in determining whether a disclosure would require undue experimentation include:
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill of
those in the art, (7) the predictability or unpredictability of the art, and (8) the
breadth of the claims.
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
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