Appeal No. 1998-1024
Application 08/511,703
1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343, 1345,
188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether appellants' disclosure, considering the level of ordinary
skill in the art as of the date of appellants' application, would have enabled a person of such skill to
make and use appellants' invention without undue experimentation. The threshold step in resolving this
issue is to determine whether the examiner has met his burden to establish a prima facie case of lack of
enablement by advancing acceptable reasoning inconsistent with enablement. This the examiner has not
done.
Factors to be considered in determining whether a disclosure would require undue
experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.1
The examiner has correctly pointed out that appellants' disclosure fails to disclose specific
structural components and a manner of using the characteristic curves to determine load-torque
changes. However, it is our opinion that in this instance these circumstances are not sufficient to
establish a prima facie case of lack of enablement. This is especially true in view of the fact that the
1 See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); citing
Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
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