Appeal No. 1999-0123
Application No. 08/406,239
DISCUSSION
In reaching our decision in this appeal, we have considered appellants’
specification and claims, in addition to the respective positions articulated by the
appellants and the examiner. We make reference to the examiner’s Answer3, and
the examiner’s Supplemental Answer4 for the examiner’s reasoning in support of the
rejections. We further reference appellants’ Brief5, and appellants’ Reply Brief6 for
the appellants’ arguments in favor of patentability.
THE REJECTIONS UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
Appellants argue the rejections under 35 U.S.C. § 112, first paragraph
together, therefore, we will treat them together in this decision.
It is well settled that the examiner bears the initial burden of providing
reasons why a supporting disclosure does not enable a claim. In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). See also, In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988):
Factors to be considered in determining whether a
disclosure would require undue experimentation have
been summarized by the board in In re Forman, [230
USPQ 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. (footnote omitted).
3 Paper No. 15, mailed August 28, 1997.
4 Paper No. 17, mailed November 12, 1997.
5 Paper No. 14, received July 21, 1997.
6 Paper No. 16, received October 27, 1997.
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