Appeal No. 2003-1268 Page 7
Application No. 09/706,566
claimed invention for the following reasons. First, the examiner has not set forth why
the claimed invention cannot be assembled. Instead, the examiner has set forth why
the disclosed device cannot be assembled. Second, the examiner has not set forth
sufficient basis why the claimed invention, or for that matter the disclosed device,
cannot be assembled without undue experimentation. 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.2 Lastly,
there is ample evidence in the Declaration of the inventor (Paper No. 10, filed June 19,
2002) and the prior art cited in the brief, that a myriad of methods exist for making both
the claimed invention and the invention as disclosed. That is, one skilled in the art
would not require undue experimentation to assembly sleeve 31 onto the bushing 11.
For the reasons set forth above, the decision of the examiner to reject claims 9
to 24 under 35 U.S.C. § 112, first paragraph, is reversed.
2 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).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007