Appeal No. 1998-2841
Application No. 08/463,282
The question is whether the disclosure is sufficient to enable those skilled in the art
to practice the claimed invention; the specification need not disclose what is well known in
the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d
1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (citing In re Myers, 410 F.2d 420, 161
USPQ 668 (CCPA 1969)). "A patent need not teach, and preferably omits, what is well
known in the art." Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3
USPQ2d 1737, 1743 (Fed. Cir. 1987). "Not every last detail is to be described, else
patent specifications would turn into production specifications, which they were never
intended to be." In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962).
The examiner bears the initial burden of setting forth a reasonable explanation as to
why the scope of protection provided by the claims is thought to be not adequately enabled
by the description of the invention provided in the specification. If that burden is met, the
burden then shifts to the applicant to provide proof that the specification is indeed
enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993).
The statement of the rejection (Final Rejection, pages 1-2; Answer, page 6) does
little to meet the initial burden. The rejection merely alleges that certain aspects of the
disclosure are not clearly understood, which, without more, does not show 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
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007