Appeal No. 1998-2707
Application No. 08/586,081
enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993).
The statement of the rejection (Answer at 5-6) does little to meet the initial burden.
The rejection merely alleges that the specification does not enable an aspect of the
claimed invention. A mere allegation cannot demonstrate lack of enablement. “Whether
undue experimentation is needed is not a single, simple factual determination, but rather is
a conclusion reached by weighing many factual considerations.” In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). The 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.
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
2
The statement of the rejection is thus plainly deficient. Moreover, the Answer's
"Response to Arguments" section indicates that the examiner's standard for enablement
was based on an improper legal footing. "Surely there are other circuits, templates or
other mechanisms, which applicant has [sic; applicants have] not disclosed, to make the
2We note that Office policy is to consider all the relevant factors when making a rejection for lack
of enablement. “The examiner’s analysis must consider all the evidence related to each of these [Wands]
factors, and any conclusion of nonenablement must be based on the evidence as a whole.” Manual of
Patent Examining Procedure § 2164.01(a), Seventh Edition, Rev. 1 (Feb. 2000).
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