Ex parte DISCHLER - Page 13




          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              







Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007