Appeal No. 2002-2110 Page 6
Application No. 09/224,748
(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. In view of the different standards for the written
description requirement and the enablement requirement, "a specification which
'describes' does not necessarily also 'enable' one skilled in the art to make or use the
claimed invention." In re Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA
1975) (citing In re Mayhew, 481 F.2d 1373, 179 USPQ 42 (CCPA 1973)).
Here, although the examiner's rejection asserts a failure to satisfy the
enablement requirement, the appellants' argument addresses satisfaction of the written
description requirement. For example, the appellants argue, "[i]s not that claimed
terminology supported by the description in lines 22-23 of page 3 of Appellants'
specification? Does not item '(6)' on page 6 (lines 6-8) of Appellants' specification
also provide support for the above-quoted terminology of Claim 17." (Appeal Br. at 7
(emphases added).) Because the argument is non-responsive to the non-enablement
rejection, we affirm the rejection of claims 17 and 18.
Obviousness Rejections of Claims 1, 2, and 4-13
Admitting that "Stewart et al. does not specifically state that the width, depth, and
length of the mechanical surface anomalies are calculated," (Examiner's Answer at 6),
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