Ex Parte Brueckner et al - Page 10



             Appeal 2007-1200                                                                                   
             Application 09/900,251                                                                             
                                                 ANALYSIS                                                       
                   The Examiner walked through each of the In re Wands factors in turn;                         
             however, much of his analysis was cursory and based on conclusory statements                       
             that particular factors supported a conclusion of nonenablement.  The Examiner                     
             follows two main lines of reasoning in finding claims 1-40 not to be enabled.                      
                   First, the Examiner found that there is a lack of prior art pertaining to the                
             subject matter of the application (Answer 4).  He further found that:                              
                          the lack of prior art pertaining to the subject matter of the                         
                          application provides evidence for the lack of                                         
                          predictability in the art. Therefore, since the state of the                          
                          prior art refers to the level of skill of a person of ordinary                        
                          skill in the art, the specification as filed lacks sufficient                         
                          direction or guidance required to meet the enablement                                 
                          requirement (see MPEP § 2164.05(a)).                                                  
             (Answer 4).  As a result, the Examiner found that the Specification fails to fill the              
             gap between the knowledge of one of ordinary skill in the art and the applicants’                  
             claimed invention (Answer 4-5).  Finally, the Examiner found that                                  
                          since the applicants specification does not provide                                   
                          adequate direction and guidance in the practicing of the                              
                          claimed invention, and since the art area is relatively                               
                          unpredictable and undeveloped, the invention would                                    
                          require an undue amount of experimentation (see MPEP                                  
                          § 2164.06).                                                                           
             (Answer 6).                                                                                        
                   This first line of reasoning is supported by nothing more than conclusory                    
             statements, without supporting analysis.  For example, the base finding that there is              
             a lack of prior art is presented in a conclusory statement without any analysis or                 

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