Appeal No. 1997-0529 Page 13
Application No. 08/573,884
When considering the factors relating to a
determination of non-enablement, if all the other factors
point toward enablement, then the absence of working
examples will not by itself render the invention
non-enabled. In other words, lack of working examples or
lack of evidence that the claimed invention works as
described should never be the sole reason for rejecting
the claimed invention on the grounds of lack of
enablement.
. . .
The presence of only one working example should
never be the sole reason for rejecting claims as being
broader than the enabling disclosure, even though it is a
factor to be considered along with all the other factors.
To make a valid rejection, one must evaluate all the
facts and evidence and state why one would not expect to
be able to extrapolate that one example across the entire
scope of the claims.
Furthermore, when all the factors are considered, it is
our view that it would not require undue experimentation to
practice the invention as set forth in the claims under
appeal. In that regard, we note that in addition to the two
examples provided by the appellant, the appellant also
provides guidance on page 1 of the specification by teaching
that polymeric fibers having a low coefficient of friction are
coated with a polymeric coating having a high coefficient of
friction to provide a fabric which is more resistant to
penetration. This teaching would direct an artisan practicing
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