Appeal No. 2001-1925 Page 5
Application No. 08/677,838
The burden is on the examiner to set forth a prima facie case of
unpatentability. See In re Glaug, 283 F.3d 1335, 1338, 62 USPQ2d 1151, 1156
(Fed. Cir. 2002). Facts that should be considered in determining whether a
specification is enabling, or if it would require an undue amount of
experimentation to practice the invention include: (1) the quantity of
experimentation necessary to practice the invention, (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. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1403 (Fed.
Cir. 1988). In order to make a record that is amenable to meaningful review, we
recommend that when making an enablement rejection, the examiner should
explicitly state the factors as set forth in Wands and set forth facts pertaining to
the pertinent factors. See In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1432 (Fed. Cir. 2002) (stating that for meaningful judicial review to occur, the
agency must present a full and reasoned explanation of its decision).
The examiner has not set forth a Wands analysis. At most, the
examiner’s analysis of the pictures is pertinent to the presence of absence of
working examples. But in the examiner’s own words, the results presented by
the pictures are “equivocal” or “ambiguous.” The presentation of equivocal or
ambiguous results, however, does not in and of itself, support the conclusion that
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