Appeal No. 1996-2209
Application No. 08/031,346
3. Claims 1-26 stand rejected under 35 U.S.C. § 103 as unpatentable for obviousness
over DT’91 in view of Zee, Wiesehahn and Edelson.
DECISION ON APPEAL
35 U.S.C. § 112, first paragraph
Claims 1-26 stand rejected under 35 U.S.C. § 112, first paragraph as unpatentable for
lack of enablement.
In order to establish a prima facie case of non-enablement, the examiner must provide
a reasonable explanation as to why the scope of protection provided by a claim is not
adequately enabled by the disclosure. See In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). The threshold step in resolving this issue
is to determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement.
Factors to be considered by the examiner in determining whether a disclosure would
require undue experimentation have been summarized by the board in Ex parte Forman, 230
USPO 546, 547 (Bd. Pat. App. & Int. 1986). They 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. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). We
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007