Appeal No. 1996-2809
Application No. 08/399,961
experimentation, although the need for a minimum
amount of experimentation is not fatal * * *.
Enablement is the criterion, and every detail need
not be set forth in the written specification if the
skill in the art is such that the disclosure enables
one to make the invention. [Citations omitted.]
The determination of what constitutes undue experimentation in
a given case requires the application of a standard of
reasonableness, having regard for the nature of the invention
and the state of the art. See Ex parte Forman, 230 USPQ 546,
547 (Bd. Pat. App. & Int. 1986).
Here, the examiner appears to allege that failure to
define the term “a callandria cell” in the specification would
prevent one of ordinary skill in the art to make and/or
practice the claimed subject matter. See Answer, pages 5 and
15. In so alleging, the examiner fails to take into account
the nature of the invention as well as the state of the art.
Id. When appellants refer to the state of the art as
represented by Weinberg, page 375, and Considine, page 484, to
show that the meaning of “a callandria cell” is well known,
see Brief, page 14, the examiner requires appellants to
provide such a meaning in the specification, see Answer, page
15. The examiner simply does not recognize that “every detail
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