Appeal No. 1998-0488
Application No. 08/496,234
"experimentation." In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988).
When we apply the above-noted case law to the facts of
this case, we cannot escape the conclusion that the examiner
has failed to support his position that the disclosure in this
application is insufficient to support the claimed invention.
The determination of what constitutes undue experimentation in
a given case requires the application of a standard of
reasonableness, having due regard for the nature of the
invention and the state of the art. In our view, every step
and means recited in the appealed claims is essentially the
same as set forth in the applied prior art except that the
claimed invention makes decisions based on a process black
registration mark rather than some other form of registration
mark. The examiner’s position appears to suggest that since
the claimed invention is alleged to be different than the
prior art, then the prior art teachings cannot support the
claimed invention. The error in the examiner’s position,
however, is that the steps of forming registration images,
examining registration marks, generating error signals, and
adjusting printing stations for example, are all performed in
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