Appeal No. 1996-3977
Application 08/232,627
providing a reasonable explanation, supported by the record as a whole, why the assertions as to the
scope of objective enablement set forth in the specification are in doubt, including reasons why the
description of the invention in the specification would not have enabled one of ordinary skill in this art to
practice the claimed invention without undue experimentation, in order to establish a prima facie case
under the enablement requirement of the first paragraph of § 112. In re Wright, 999 F.2d 1557,
1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988); In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64
(CCPA 1982); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). In
addition to the breadth of the claims and the amount of direction or guidance in the specification, factors
to be considered in determining whether the enablement requirement of § 112, first paragraph, has been
complied with include the quantity of experimentation necessary, the presence or absence of working
examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, and
the predictability or unpredictability of the art. Wands, supra, citing Ex parte Forman, 230 USPQ
546, 547 (Bd. Pat. App. & Int. 1986).
We agree with appellants, for the reasons given in their briefs, that the examiner has failed to
establish that, prima facie, the claims violate § 112, first paragraph, enablement requirement. We add
the following for emphasis. It is apparent from Shai that coating surfaces for use in a space environment
was an established art with a high skill level at the time the present application was filed and, indeed,
appellants have disclosed factors that would be encountered in such an environment at page 9 of the
specification. Accordingly, given that the invention is in a recognized art area with a high level of skill
and known elements necessary for success wherein testing in the actual use environment is undertaken,
we cannot agree with the examiner that “sending a coated component into space for stability testing
would seem to epitomize ‘undue experimentation’” (answer, page 6). Accordingly, we reverse this
ground of rejection.
We now consider the ground of rejection of claims 16 and 19 under § 102(b) as being
refers to 35 U.S.C. § 112, first paragraph, in whole or by requirement, and thus we will not further
refer in this decision to either of these MPEP sections.
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