Appeal No. 96-1943
Application No. 08/147,008
from Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395
(CCPA 1972):
To 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. [Citations omitted;
emphasis added.]
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 Ex parte Forman, 230 USPQ 546,
547 (Bd. Pat. App. & Int. 1986).
Here, we do not find that the examiner has satisfied the
initial burden of producing any reasonable line of reasoning
which would substantiate a rejection based on lack of
enablement. In response to the appellants' arguments, the
answer states that
the disclosure is sketchy and schematic in many
locations, for example, the actual structure and
control of the brakes by computer, that [sic] one
skilled in the art would be guessing at what
appellants actually used. Appellants draw some
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