Appeal No. 96-0550 Application 07/960,148 561, 563 (CCPA 1982). Once this is done, the burden shifts to the appellants to rebut the conclusion of the examiner regarding enablement by presenting evidence to prove that the disclosure is enabling. Id. at 1561, 27 USPQ2d at 1513; In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973); In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert. denied, sub nom. Doyle v. Comm'r of Patents, 416 U.S. 935 (1974). Additionally, as the court in In re Gaubert, 524 F.2d 1222, 1226, 187 USPQ 664, 667 (CCPA 1975) stated: [t]o satisfy § 112, the specification disclosure must be sufficiently complete to enable one of ordinary skill in the art to make the invention without undue experimentation, although the need for a minimum amount of experimentation is not fatal.... Enablement is the criterion, and every detail need not be set forth in the written specification if the skill in the art is such that the disclosure enables one to make the invention. The determination of what constitutes undue experimentation in a given case requires the application of a standard of reasonableness, having regard for the nature of the invention and the state of the art. See, In re Wands, 858 F.2d 731, 736, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). The provisions of 35 U.S.C. § 112, first paragraph, do not require that the specification contain what is well known to those skilled in the art. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., -4-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007