Appeal 2006-2983
Application 10/733,957
claims 67 and 68, because Breed describes using the control module (150) to
control the stiffness and damping of the seat using air compressor (555).
We find that a person of ordinary skill in the art at the time of Breed would
have had an understanding of commercially available sensors and would have had
knowledge on how to use microprocessors to receive signals from the sensors and
process that information to control components of the vehicle. Breed provides
sufficient direction and guidance of how to make and use the invention, that one of
ordinary skill in the art, would have been enabled to make and use the claimed
invention without undue experimentation.1
PRINCIPLES OF LAW
To determine whether the disclosure in Breed satisfies the requirements of
section 112, first paragraph, for the claimed invention, we must first determine the
scope of the claims. We determine the scope of the claims in patent applications
“not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d
1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am.
1 We note that the Examiner bears the burden of proof on lack of enablement, see
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The Examiner does not provide any explanation in the Answer as to why the
claims are not adequately enabled by the description of Breed that would support a
conclusion of undue experimentation. The Examiner’s position appears to be
based on a lack of written description. In any event, because the Examiner’s final
rejection referred to a lack of enablement, we have treated this issue along with
written description.
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