Appeal No. 1999-1631
Application 08/733,586
USPQ 92] (1967); In re Chilowsky, 229 F.2d 457,
43 CCPA 775[, 108 USPQ 321] (1956).
Accord In re Wright, 999 F.2d 1557, 1563, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993). Although, as the examiner correctly notes
(Answer at 3), the embodiment depicted in Figure 3 has a mean
difference of value 1.55 microns (Specification at 9, l. 17),
which is also the mean difference value the embodiment
depicted in Figure 2 (id. at 7, l. 3), the absence of an
embodiment having a mean difference of about 0.5 microns is
insufficient in and of itself to satisfy the examiner's
initial burden to show nonenablment. Note that in Wright,
which involved an application that disclosed a single working
example within the scope of the claim, the court held that the
examiner and the Board had given adequate reasons why one
skilled in the art would have been unable to make other
embodiments within the scope of the claim. 999 F.2d at 1560-
64, 27 USPQ2d at 1511-15. See also In re Strahilevitz, 668
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982):
We recognize that working examples are desirable in
complex technologies and that detailed examples can
satisfy the statutory enablement requirement.
Indeed, the inclusion of such examples here might
well have avoided a lengthy and, no doubt, expensive
appeal. Nevertheless, as acknowledged by the board,
examples are not required to satisfy section 112,
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