Appeal No. 1998-1386 Page 14
Application No. 08/269,156
shapes and literal context. No details are provided and their
implementation would require excessive experimentation or
delay ....” (Supplemental Examiner’s Answer at 5.) The
appellant’s reply follows.
[T]he specification, beginning on page 17, line 1
explains that the present invention can be
implemented using a variety of different computer
systems, such as a personal computer using an Intel
66 MHZ 80486 microprocessor, running on Microsoft
Windows 3.1 operating system. Also provided in the
specification is a list of exemplary data structures
and functions that may be employed in programming in
C language a digital computer to perform the
functions described in the specification and
diagrammed in step-by-step detail in Figs. 3 through
9. (Appeal Br. at 26-27.)
To fulfill the enablement requirement, a specification
must contain a description that enables one skilled in the art
to make and use the claimed invention. That some
experimentation is necessary does not preclude enablement.
All that is required is that experimentation not be unduly
extensive. Atlas Powder Co. v. E. I. Du Pont de Nemours &
Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984). “[T]he PTO bears an
initial burden of setting forth a reasonable explanation as to
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