Appeal No. 2000-0181
Application No. 08/929,287
constant speed not exceeding about 35 rpm
notwithstanding a substantial increase in
pressure from said first predetermined
value to a second predetermined value.
The examiner asserts that since appellants are not certain how
the claimed invention works, knowledge of other factors, such
as viscous friction, cavitation, temperature, etc. may be
necessary for an artisan to make and use the invention
(answer, page 6).
It is well settled that,
[w]hile it is not a requirement of patentability
that an inventor correctly set forth, or even
know, how or why the invention works, Diamond
Rubber Co. v. Consolidated Rubber Tire Co., 220
U.S. 428, 435-36 (1911); Fromson v. Advance
Offset Plate Inc., 720 F.2d 1565, 1570, 219 USPQ
1137, 1140 (Fed. Cir. 1983), neither is the
patent applicant relieved of the requirement of
teaching how to achieve the claimed result, even
if the theory of operation is not correctly
explained or even understood. In re Isaacs, 347
F.2d 887, 892, 146 USPQ 193, 197 (CCPA 1965); In
re Chilowsky, 229 F.2d 457, 463, 108 USPQ 321,
326 (CCPA 1956).
Newman v. Quigg, 877 F.2d 1575, 1582-83, 11 USPQ2d 1340, 1345
(Fed. Cir. 1989). In order to satisfy the enablement
requirement of the first paragraph of § 112, the specification
must enable one of ordinary skill in the art to practice the
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