Appeal No. 96-2137
Application 07/668,920
OTHER ISSUES
1. Enablement.
We emphasize that in vacating the examiner’s rejection under 35 U.S.C. § 112,
first paragraph, lack of enablement, we take no position on the merits of the matter.
Rather, consideration of the issue is premature until the scope of the claims on appeal
can be readily ascertained. However, we make the following comments in an effort to
provide some guidance on the issue in the event prosecution is continued in front of the
examiner.
Assuming the claims are presented which are definite under 35 U.S.C. § 112,
second paragraph, the examiner and appellants should take the issue of enablement
under consideration in light of the relevant legal standings. To be enabling, a
disclosure must teach persons skilled in the art to make and use the claimed invention
without undue experimentation. In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438,
1444 (Fed. Cir. 1991). As set forth in In re Wands, 858 F.2d 731, 736, 8 USPQ2d
1400, 1404, (Fed. Cir. 1988)(footnote omitted):
Factors to be considered in determining whether a disclosure would
require undue experimentation have been summarized . . . in Ex parte
Forman, [230 USPQ 546, 547 (BdPatAppInt 1986)]. They include (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples,
(4) the nature of the invention, (5) the state of the prior art, (6) the relative
skill of those in the art, (7) the predictability or unpredictability of the art,
and (8) the breadth of the claims.
14
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007