Appeal No. 2000-1511
Application 08/671,853
claimed. Second, the examiner’s findings of undue
experimentation are mere conclusions based on the examiner’s own
speculations. The examiner essentially finds that there would be
undue experimentation because the claimed invention requires
sophisticated and complex operations. The fact that an invention
is sophisticated and complex does not, by itself, lead to the
conclusion that undue experimentation would be required to make
and use the invention. We agree with appellants that the
preponderance of the evidence in this case supports the adequacy
of the disclosure.
With respect to the real time issue, we essentially agree
with all of appellants’ arguments. We also note that there is no
recitation of real time operation in the claims. The examiner’s
arbitrary definition of real time operation is irrelevant to the
claimed invention. This particular issue appears to be more of a
question of practical utility of the invention rather than
whether it is properly disclosed. As argued by appellants, even
if the invention operates in the real time frame established by
the examiner, that does not mean that the invention is not
practical or has no utility. Enablement only has to relate to
the invention as claimed.
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