Appeal No. 95-4789
Application 08/146,311
The examiner admits that the application has adequately
disclosed two embodiments, but says that the disclosure does not
enable practice of the invention as broadly as the claims recite.
The examiner apparently agrees that the broadest claims are
generic to both embodiments. Examiner’s Answer at 4.
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.
Spectra-Physics Inc. v. Coherent Inc., 827 F.2d 1524, 3 USPQ2d
1737 (Fed. Cir. 1987). Cf. In re Corkill, 771 F.2d 1496, 1501,
226 USPQ 1005, 1009 (Fed. Cir. 1985) (chemical arts).
The present invention pertains to a predictable art,
and the examiner does not contend otherwise. We are at a loss to
find any basis in the law for the examiner’s rejections. The
rejections appear to be inappropriate “undue breadth” rejections.
See In re Chupp, 816 F.2d 643, 647, 2 USPQ2d 1437, 1440 (Fed.
Cir. 1987).
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