Appeal No. 1998-1562 Page 23
Application No. 08/611,416
We consider factor (1) the quantity of experimentation
necessary to be more than routine, factors (2) the amount of
direction or guidance presented and (3) the presence or
absence of working examples is minimal since the specification
does not provide much guidance, and factor (4) the nature of
the invention is a gripper utilized in a lap processing
machine to eject spent cores from the working position of the
machine. Factors (5) the state of the prior art and (6) the
relative skill of those in the art are shown by the teachings
of the applied prior art in this case (i.e., Eichenberger,
Johannsson and Smith). With regard to factor (7) the
predictability or unpredictability of the art, we find this
art to be predictable. Lastly, with respect to factor (8) the
breadth of the claims, we find claim 20 to encompass variants
of gripper elements.
In weighing these factors in this case, we conclude that
subject matter of claim 20 is not enabled since one skilled in
the art would have been unable to make and use the appellants'
invention without undue experimentation.
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