Appeal No. 1998-3301 Page 12
Application No. 08/784,361
system of Figure 15. However, the examiner has not provided
any reasoning as to why one skilled in the art would not have5
been able to make the claimed "lockable front door" or the
"motorized means" of claim 16 without undue experimentation.
For the reasons stated above, the decision of the
examiner to reject claims 2, 4 through 19 and 25 through 30
based upon the enablement requirement of the first paragraph
of 35 U.S.C. § 112 is reversed.
The anticipation rejections
We will not sustain any of the examiner's rejections of
claims 2, 4 through 7, 12 through 15 and 25 under 35 U.S.C.
§ 102(b).
5Factors to be considered by an examiner in determining
whether a disclosure would require undue experimentation
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. See In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. &
Int. 1986).
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