Appeal No. 2001-0378 Page 13
Application No. 08/873,876
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.
. . .
The presence of only one working example should
never be the sole reason for rejecting claims as being
broader than the enabling disclosure, even though it is a
factor to be considered along with all the other factors.
To make a valid rejection, one must evaluate all the
facts and evidence and state why one would not expect to
be able to extrapolate that one example across the entire
scope of the claims.
Furthermore, when all the factors are considered, 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 in addition to the one
example provided by the appellant, the appellant also provides
guidance in the specification to select a material for the
sole having a resiliency index in the range from about .05 to about
.5. This teaching would direct an artisan practicing the
claimed invention to choose any material having the claimed
resiliency index. Moreover, the quantity of experimentation
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