Appeal No. 1997-2338
Application No. 08/173,376
unpredictable art. In re Angstadt, 537 F.2d 498, 502-03, 190 USPQ 214, 218 (CCPA 1976).
A conclusion of lack of enablement means that, based on the evidence regarding the above
factors, the specification, at the time the application was filed, would not have taught one
skilled in the art how to make and/or use the full scope of the claimed invention without undue
experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993).
On the record before us, we find that the examiner's statements, in support of this
rejection, fall short of the requirement set forth above and, therefore, fail to reasonably
establish that one skilled in the art would doubt the disclosure provided in support of the
claimed method of preventing insect bites on vertebrates. The examiner's conclusory
statements relating to the Wands factors are not supported by facts or evidence which would
provide a reasonable basis for the conclusions reached. Thus, to the extent that we
understand the examiner's position in this rejection, the examiner has failed to make those
factual findings which must be made before a conclusion of "lack of enablement" may
properly be reached. Therefore, the rejection of claims 6 - 7 under 35 U.S.C. ' 112, first
paragraph, is reversed.
The rejection under 35 U.S.C. ' 103
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