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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