Appeal No. 2001-1124
Application 08/885,468
unpredictability of the art, and (8) the breadth of the claims.
Id. at 737, 8 USPQ2d at 1404. Our reviewing court has also noted
that all of the factors need not be reviewed when determining
whether a disclosure is enabling. See, Amgen, Inc. v. Chugai
Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed.
Cir. 1991) (noting that the Wands factors “are illustrative, not
mandatory. What is relevant depends on the facts.”).
The Examiner has argued that Appellant’s specification fails
to provide an enabling disclosure because there is no circuitry
taught that performs the control of the keyboard in the various
settings. See page 3 of the Examiner’s answer.
Appellant respectively submit that one of ordinary skill in
the art would clearly know how to modify a conventional
electronic keyboard in order to perform the claimed invention.
Appellant argues that the Examiner has not come forth with any
reason as to why one of ordinary skill in the art could not make
and use the claimed invention without undue experimentation. See
page 4 of Appellant’s brief. Appellant further argues that one
of ordinary skill in the art would be able to practice the
claimed method steps without undue experimentation given the
general knowledge in the prior art and the disclosure of the
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