Appeal No. 1996-2732
Application 08/241,524
skilled in the art to which it pertains to make and use the claimed invention.
PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618,
1623 (Fed. Cir. 1996); In re Wright, 999 F.2d 1557, 1561, 27 USPQ 1510, 1513 (Fed.
Cir. 1993); In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
Although the statute does not so state, our appellate reviewing court has held that
enablement requires that the specification teach such persons to make and use the
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claimed invention without “undue experimentation.” In re Vaeck, 947 F.2d at 495,
20 USPQ2d at 1444. When making a rejection under this statute, it is the examiner’s
burden to present reasons why the specification would not have enabled those skilled in
the art to make and use the full scope of the claimed invention absent undue
experimentation. In re Angstadt, 190 USPQ 214, 219 (CCPA 1976); In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). This the examiner has not
done. Rather, we find that the examiner has only made an assertion that the soap and
propellant of the composition must be identified and their ratios of concentrations
disclosed. Answer, p. 3. Since the examiner has not performed the fact finding necessary
1The court has also set forth the factors to be considered in determining whether a
disclosure would require undue experimentation. In re Wands, 858 F.2d 731, 737, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). Those factors 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. [In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404].
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