Appeal No. 2001-2118
Application No. 08/987,977
cert. denied, 416 U.S. 935 (1974) and In re Eynde, 480 F.2d 1364,
1370, 178 USPQ 470, 474 (CCPA 1973).
Turning now to the circumstances before us, the examiner has
particularly focused upon the “calculating” step of appellant’s
method claims in asserting that the claimed invention is not
enabled by the application disclosure. However, nowhere within
the rejection has the examiner addressed the critical matter of
establishing that appellant’s teaching would require undue
experimentation to make and use the invention now claimed. Thus,
the readily apparent deficiency of the examiner’s enablement
rejection is its failure to satisfy the test for enablement; a
test, which as set forth earlier, mandates a showing of undue
experimentation. Since the rejection on appeal lacks the
requisite showing of undue experimentation, we cannot sustain the
rejection of appellant’s claims under 35 U.S.C. § 112.
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007