Appeal No. 2002-0296 Page 7
Application No. 09/248,553
enabled a person of such skill to make and use the appellant's invention without undue
experimentation. The threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement.2 This the examiner has not done. In fact, the
examiner has not set forth any rationale as to why the appellant's disclosure,
considering the level of ordinary skill in the art as of the date of the appellant's
application, would not have enabled a person of such skill to make and use the
appellant's invention without undue experimentation.
For the reasons set forth above, the decision of the examiner to reject claim 6
under 35 U.S.C. § 112, first paragraph, is reversed
The indefiniteness rejection
We will not sustain the rejection of claims 1 and 3 to 6 under 35 U.S.C. § 112,
second paragraph.
2 This is usually accomplished by considering the following factors in determining whether a
disclosure would require undue experimentation: (1) the quantity of experimentation necessary, (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, 1404 (Fed. Cir. 1988) citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat.
App. & Int. 1986).
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