Appeal No. 2002-1371 Page 4
Application No. 08/474,796
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.
Instead of a fact-based reasoned analysis as to why appellant’s disclosure
does not provide an enabling description of the claimed invention, we find only
the examiner’s unsupported conclusion that the specification does not enable
the claimed invention. In this regard, we note the examiner’s numerous
references to the “state of the art” (Answer, page 5); missing however, is a
citation to any reference that provides a factual basis upon which to question
the predictability of appellants’ claimed invention. In this regard, we remind the
examiner that findings of fact and conclusions of law by the USPTO must be
made in accordance with the Administrative Procedure Act, 5 U.S.C.
§ 706(A),(E), 1994. Dickinson v. Zurko, 527 US 150, 158, 119 S. Ct. 1816,
1821, 50 USPQ2d 1930, 1934 (1999). Our reviewing court has held that findings
of fact must be supported by substantial evidence within the record. In re
Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000)
(“because our review of the board’s decision is confined to the factual record
compiled by the board … the ‘substantial evidence’ standard is appropriate for
our review of board fact findings, see 5 U.S.C. § 706(2)(E).”). See also In re
Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002) (a board decision
denying patent must be founded on necessary findings and must provide an
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