Appeal No. 1998-2043
Application No. 08/606,601
3
The statement of the rejection is thus plainly deficient. However, the examiner’s
position is fleshed out somewhat on pages 3 and 4 of the Answer. The examiner refers to
instant prior art Figures 6 and 7, and draws attention to the fact that the (undisclosed) drive
train system inherent in appellants’ system is located differently from those that came
before, since the instant invention locates the tape guiding members and arms on the
movable cassette mounting member.
However, in our view, other factors -- not addressed in the rejection -- which are
relevant to the enablement analysis outweigh the facts pointed out by the examiner upon
which the instant rejection is based. The level of predictability in the mechanical and
electrical arts is recognized as being relatively high. See, e.g., In re Hogan, 559 F.2d 595,
606, 194 USPQ 527, 537-38 (CCPA 1977) (taking notice of the high level of predictability
in mechanical or electrical environments and the lower level of predictability expected in
chemical reactions and physiological activity). The U.S. patents cited by the examiner as
being pertinent to appellants’ disclosure (in the Office action mailed Dec. 6, 1996, Paper
No. 5), of record, are indicative of the state of the prior art, and the relative skill of those in
the art. The disclosures of Takeda et al. (5,315,46), Yamabuchi et al. (5,361,180), and
Lee et al. (5,459,626) appear to indicate that the mechanical structures that are
3We note that, consistent with the law of our reviewing court, it is Office policy to consider all the
relevant factors when making a rejection for lack of enablement. “The examiner’s analysis must consider
all the evidence related to each of these [In re Wands] factors, and any conclusion of nonenablement must
be based on the evidence as a whole.” Manual of Patent Examining Procedure § 2164.01(a), Seventh
Edition, Rev. 1 (Feb. 2000).
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