Appeal No. 1999-1773
Application No. 08/497,858
comply with the enablement clause of the first paragraph of 35 U.S.C. § 112, the
disclosure must provide an adequate description such that the artisan could practice the
claimed invention without undue experimentation. In re Scarbrough, 500 F.2d 560, 566,
182 USPQ 298, 303 (CCPA 1974); In re Brandstadter, 484 F.2d 1395, 1407, 179 USPQ
286, 295 (CCPA 1973). Enablement is not precluded by the necessity for some
experimentation. However, experimentation needed to practice the invention must not be
undue experimentation. The key word is "undue", not "experimentation." In re Wands, 858
F.2d 731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). The burden is initially upon
the examiner to establish a reasonable basis for questioning the sufficiency of the
disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
The PTO has the burden of giving reasons, supported by the record as a whole, why the
specification is not enabling. Showing that the disclosure entails undue experimentation is
part of the PTO’s initial burden. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219
(CCPA 1976).
The examiner finds lack of enablement by asserting that the specification does not
indicate how the polynomial transfer function was derived and what its variables represent.
The examiner also asserts that the functionality of the resetting means is not disclosed,
and the “s” in the transfer function is not defined nor is the means for changing this value
clearly defined. Appellants argue that the artisan would have had the requisite knowledge
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