Appeal No. 2001-1760
Application No. 09/259,890
the relative skill of those in the art and the predictability or unpredictability of the art. In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), citing Ex parte Forman, 230 USPQ
546, 547 (Bd. Pat. App. & Int. 1986).
Here, the examiner has not demonstrated that one of ordinary skill in the art would not be
able to practice the claimed invention, without undue experimentation, based on the guidance
provided in the specification and the information known in the art (the state of the art). See also In
re Stephens, 529 F.2d 1343, 1345,188 USPQ 659, 661 (CCPA 1976)(the test of enablement is
whether one skilled in the art could make or use the claimed invention from the disclosure coupled
with information known in the art without undue experimentation). The examiner not only ignores
the state of the art in his analysis, but also does not explain why undue experimentation would be
required.1 See the Answer in its entirety. Moreover, the examiner’s focus on the disclosure of a
limited number of specific embodiments in the specification does not render claims to a broader
invention non-enabling. The specification is “not required to disclose every species [every
embodiment] encompassed by their claims...” Angstadt, 537 F.2d at 503, 190 USPQ at 218; see
also In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981)(“An inventor need not,
however, explain every detail since he is speaking to those skilled in the art. What is conventional
knowledge will be read into the disclosure.”) Absent a showing of undue experimentation, the
1 To the extent that the examiner’s allegations regarding unpredictability and criticality of
the claimed invention relate to “undue” experimentation (Answer, pages 3, 6 and 7), we do not
find them persuasive since they are not supported by any objective evidence.
3
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