Ex parte MARK G. VOSS et al. - Page 6




              Appeal No. 96-1677                                                                                       
              Application 08/144,735                                                                                   



              flanges operable without undue experimentation.  To the extent that the examiner’s                       
              rejection is to be construed as based on the enablement provision of 35 U.S.C.  112,                    
              first paragraph, we also reverse the examiner’s rejection.  We add the following                         
              quotations to emphasize this point.                                                                      
                     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); In re Vickers, 141 F.2d 522, 527, 61                                   
                     USPQ 122, 127 (CCPA 1944), and 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, 1743                         
              (Fed. Cir. 1987).                                                                                        

                     [M]any patented claims read on vast numbers of inoperative embodiments                            
                     in the trivial sense that they can and do omit ‘factors which must be [sic,                       
                     have been] presumed to be within the level of ordinary skill in the art,’                         
                     In re Skrivan, 427 F.2d 801, 806, 166 USPQ 85, 88 (1980), and therefore                           
                     read on embodiments in which such factors may be included in such a                               
                     manner as to make the embodiments inoperative.  There is nothing wrong                            
                     with this so long as it would be obvious to one of ordinary skill in the                          
                     relevant art how to include those factors in such manner as to make the                           
                     embodiment operative rather than inoperative.  (Citations omitted.)                               
              Cook at 735, 169 USPQ at 302 (citing Skrivan at 806, 166 USPQ at 88).                                    






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