Appeal No. 1999-0279 Page 10
Application No. 08/926,986
arguments, supported by suitable proofs where necessary, that
one skilled in the art would be able to make and use the
claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973).
Thus, the dispositive issue is whether the appellants'
disclosure, considering the level of ordinary skill in the art
as of the date of the appellants' application, would have
enabled a person of such skill to make and use the appellants'
invention without undue experimentation. The threshold step
in resolving this issue as set forth supra is to determine
whether the examiner has met his burden of proof by advancing
acceptable reasoning inconsistent with enablement. Clearly,
the examiner has not met this burden. In that regard, the
examiner has not provided any reasoning as to why one skilled 2
2Factors 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
(continued...)
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