Appeal No. 2006-2457
Application No. 10/358,831
springs, (2) the springs in the references are used in applications unrelated to
disk drives, and (3) the references discuss only single springs – not dual springs
[answer, pages 5 and 6].
We will not sustain the examiner’s enablement rejection. "The test of
enablement is whether one reasonably skilled in the art could make or use the
invention from the disclosures in the patent coupled with information known in the
art without undue experimentation." United States v. Telectronics, Inc., 857 F.2d
778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988). A disclosure may be enabling
despite the need for experimentation. The test, however, is whether such
experimentation is undue. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214,
219 (CCPA 1976) [emphasis added]. Determining whether any necessary
experimentation is undue involves consideration of many relevant factors
including, but not limited to: (1) the breadth of the claims; (2) the nature of the
invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the
level of predictability in the art; (6) the amount of direction provided by the
inventor; (7) the existence of working examples; and (8) the quantity of
experimentation needed to make or use the invention based on the content of the
disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988).
In our view, the disclosure amply describes the invention with sufficient
particularity to enable the skilled artisan to make or use the invention without
undue experimentation. The examiner has simply not provided any evidence
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