Appeal No. 2001-0982 Page 4
Application No. 08/310,950
disclosed in the specification would require no more than routine experimentation
in view of the extensive teachings of the specification and level of skill in the art.
In this regard, we remind the examiner whether the disclosure is enabling,
is a legal conclusion based on several underlying factual inquiries. As set forth
in In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400, 1402, 1404 (Fed.
Cir. 1988), the factors to be considered in determining whether a claimed
invention is enabled throughout its scope without undue experimentation include
the quantity of experimentation necessary, the amount of direction or guidance
presented, the presence or absence of working examples, the nature of the
invention, the state of the prior art, the relative skill of those in the art, the
predictability or unpredictability of the art, and the breadth of the claims.
On this record, the examiner provides no analysis consistent with holding
in Wands. Instead, we find only the examiner’s unsupported conclusions as to
why the specification does not enable the claimed invention. We remind the
examiner that nothing more than objective enablement is required, and therefore
it is irrelevant whether this teaching is provided through broad terminology or
illustrative examples. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971). In the absence of a fact-based statement of a rejection based
upon the relevant legal standards, the examiner has not sustained his initial
burden of establishing a prima facie case of non-enablement. The burden of
proof does not shift to appellant until the examiner first meets his burden.
In re Marzocchi, 439 F.2d at 223-224, 169 USPQ at 369-370.
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