Appeal No. 1999-2193 Page 9
Application No. 08/975,338
In this case, the examiner appears to have focused on the
lack of any working examples (only one of the above-noted
eight factors) and the errors in Figures 2 and 3, as the basis
that led the examiner to conclude that the scope of any
enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the
claims. Since the examiner has not weighed all the factors,
the examiner's conclusion of nonenablement cannot be
sustained. As stated in the Manual of Patent Examining
Procedure (MPEP) § 2164.02 (Seventh Edition, Rev. 1, Feb.
2000)
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.
. . .
Furthermore, 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 the
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