Appeal No. 2000-1511
Application 08/671,853
Appellants respond that the examiner’s assumptions are
incorrect and are not necessary to practice the claimed
invention. Appellants reiterate their position that the evidence
submitted by them, which is essentially unchallenged by the
examiner, supports the fact that the claimed invention can be
practiced in real time [supplemental reply brief].
As noted above, the examiner’s rejection is based upon
the enablement requirement of 35 U.S.C. § 112. The test for
enablement is not whether any experimentation is necessary, but
whether, if experimentation is necessary, it is undue. In re
Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). 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, Id.
We are of the view that the examiner has not satisfied
his burden of showing that undue experimentation would be
required in making and using the claimed invention. First, we
agree with appellants that the examiner has improperly questioned
the disclosure with respect to elements which do not appear in
the claimed invention. The examiner has clearly failed to make
this rejection commensurate with the invention as currently
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