Appeal No. 2002-0001
Application No. 08/989,674
experimentation is necessary, although the amount of experi-
mentation needed must not be unduly excessive. Hybritech, Inc.
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,
94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).
We agree with the appellants’ urgings at pages 5 and 6 of
the brief that the apparatus/system environment set forth as
various means in claims 5 through 8 corresponds to the hardware
embodiment shown in Fig. 4 and discussed at specification page
11, where the teaching is that the computer software comprising
the invention and the various means of these claims is loaded
from the diskette 96 in this Fig.
From our study of the examiner’s position at pages 4 through
6 and pages 9 through 13 of the answer, the examiner has not
established a prima facie case of non-enablement within the first
paragraph of 35 U.S.C. § 112. Claims 1 through 12 and certainly
claims 5 through 8 are consistent with the operation and scope of
enablement and disclosure of the appellants’ contribution in Fig.
3 within the environment of system Fig. 4. The nature of the
elements recited in each independent claim on appeal, which
clearly correspond to each other among the various independent
claims, is consistent with the description at pages 8 through 10
4
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