Appeal No. 2003-1557 Page 6
Application No. 09/817,884
Insofar as the enablement requirement is concerned, the dispositive issue is
whether the appellant’s disclosure, considering the level of ordinary skill in the art as of
the date of the appellant’s application, would have enabled a person of such skill to
make and use the appellant’s invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the appellant’s disclosure, the examiner has the initial
burden of advancing acceptable reasoning inconsistent with enablement. Id.
In rejecting appellants’ claims as containing subject matter which was not
described in the specification in such a way as to enable one skilled in the art to make
and/or use the invention, the examiner simply points out that the algorithm or
mathematical model used to predict the effects of engine parameter adjustments is
undisclosed and that appellants use different units (scales) for different temperatures in
their specification. Be that as it may, the examiner has not even alleged, much less
provided reasoning or evidence, that one skilled in the art at the time of appellants’
invention would not have been able, without undue experimentation, to develop such
models. As for the use of different temperature scales, the conversion to a single scale
would have presented no problem to one of ordinary skill in the art, as the formulas for
conversion are simple and extremely well known. Accordingly, the examiner has not
met the initial burden of advancing acceptable reasoning inconsistent with enablement.
It follows that the rejection under 35 U.S.C. § 112, first paragraph, cannot be sustained.
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