Appeal No. 2003-0203 Page 5
Application No. 09/419,136
The appellants' position
The appellants argue throughout both briefs that the prior art2 establishes that the
disclosure of this application was adequate to enable one of ordinary skilled in this art to
make and use the invention and that the appellants have simply applied known
technology for providing various outputs to suspension members.
Our position
We will not sustain the rejection of claims 1 to 9 under 35 U.S.C. § 112, first
paragraph, as failing to adequately teach how to make and/or use the invention, i.e.,
failing to provide an enabling disclosure.
The test for enablement is whether one skilled in the art could make and use the
claimed invention from the disclosure coupled with information known in the art without
undue experimentation.3 See United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
2 The appellants cite U.S. Patent Nos. 5,390,949; 5,291,967; 5,590,746; and 5,810,126.
3 Factors to be considered in determining whether a disclosure would require undue
experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988) citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
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