Appeal No. 2001-2692 Page 5
Application No. 08/789,001
USPQ 592, 599 (Fed. Cir. 1983)). "That some experimentation is necessary does not
preclude enablement; the amount of experimentation, however, must not be unduly
extensive." Id. at 1576, 224 USPQ at 413.
Here, the examiner does not explain why he believes that the "automatically
selecting and interconnecting" feature of independent claims 1, 35, 36, and 38 is not
adequately enabled by the appellants' specification. Furthermore, he does not allege,
let alone explain, that undue experimentation would be required to make and use the
claimed invention. We will not "resort to speculation," In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), as to such possible explanations. Therefore,
we reverse the nonenablement rejection of claims 1-38.
Anticipation Rejection of Claims 1-35 by Modarres
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained." In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002 (citing 37
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