Appeal No. 2004-2209 5
Application No. 09/406,445
examiner states that this is a lack of enablement rejection. See paragraph 2, page 2 of
the Final Rejection, Paper No. 13. And yet, in the next two paragraphs, the examiner
twice states that the claims are unpatentable under the written description requirement
of 35 U.S.C. § 112. Finally, in the examiner’s answer at page 4, the examiner states
that it would be almost impossible to determine whether one would infringe the claimed
invention . . . . This, of course, is an argument bottomed on 35 U.S.C. § 112, second
paragraph, that the claims are so indefinite that an infringement analysis would be in
doubt.
Taking each in turn, and looking at enablement first, we note that the examiner
has not addressed the issue of undue experimentation. Accordingly, the examiner has
not established a prima facie case of unpatentability with respect thereto. If the
examiner’s intention was to raise the issue of whether the scope of enablement was
broad enough to include any non-metallic guide rail, we merely point out that it is well
settled that if an invention pertains to an art where the results are predictable, e.g.,
mechanical as opposed to chemical arts, a broad claim can be enabled by disclosure of
a single embodiment, In re Cook , 439 F.2d 730, 735, 169 USPQ 298, 301 (CCPA
1971); and such a claim is not invalid for lack of enablement simply because it reads on
another embodiment of the invention which is inadequately disclosed, see Gould v.
Mossinghoff , 711 F.2d 396, 400, 219 USPQ 393, 396 (D.C. Cir. 1983). Spectra-Physics
Inc. v. Coherent Inc., 827 F.2d 1524, 1533, 3 USPQ2d 1737 (Fed. Cir. 1987).
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