Appeal No. 1998-2707
Application No. 08/586,081
present invention. But rather, appellant has [sic; appellants have] relied on what one of
ordinary skill in the art would have known regarding the comparison." (Answer at 17.) The
Answer further indicates, in the paragraph bridging pages 17 and 18, that extrinsic
evidence in support of enablement will not be considered, because "such information is
not part of the original disclosure and could not be entered now for reason of new matter
and new issues after final rejection."
However, an applicant need not, and preferably does not, disclose what is already
well known in the art. "The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosures in the patent coupled with information
known in the art without undue experimentation." U.S. v. Telectronics, Inc., 857 F.2d 778,
785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (emphasis added) (citing Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986)).
Determining what the specification fails to explicitly set forth is, at best, only a first step in
demonstrating that a disclosure is not enabling. As the precedents of our reviewing court
make plain, determining whether "undue experimentation" is required involves weighing
factors beyond what the specification explicitly sets forth.
For example, with respect to the seventh Wands factor -- the predictability or
unpredictability of the art -- the level of predictability in the mechanical and electrical arts is
recognized as being relatively high. See, e.g., In re Hogan, 559 F.2d 595, 606, 194 USPQ
527, 537-38 (CCPA 1977) (taking notice of the high level of predictability in mechanical or
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