Appeal No. 2001-2686
Application Re08/932,718
a progressive cavity pump having a connector shaft with
splines at only one end.” In support of this position, the
examiner states:
The specification does not enable any person skilled in
the art to which it pertains, or with which it is most
nearly connected, to make the invention commensurate in
scope with these claims. Claims 7 and 11 as presented
allow for the connector shaft having splines at only
one end. Throughout the specification the description
of the connector shaft and its advantages set forth
that the connector shaft has splines at both ends.
Note column 1 lines 27-31, column 2 the fourth
paragraph, and column 3 lines 26-31. There is no
disclosure of a connector shaft with a single splined
end. See Gentry Gallery, Inc. v. Berkline Corp.,
45 USPQ2d 1498 (CCPA).[sic]
The examiner’s rejection of the appealed claims under
the first paragraph of § 112 is not sustainable. The
dispositive issue concerning the enablement requirement in
the first paragraph of § 112 is whether an applicant’s
disclosure, considering the level of ordinary skill in the
art as of the date of the applicant’s application, would
have enabled a person of such skill to make and use the
claimed invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982). Factors that must be considered in determining
whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary,
(2) the direction or guidance presented, (3) the presence or
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