Appeal No. 2002-0870 Page 3
Application No. 09/208,206
1438, 1444 (Fed. Cir. 1991) (emphasis in original).3 Nevertheless, “[w]hen rejecting a
claim under the enablement requirement of section 112,” it is well settled that “the PTO
bears an initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the application; this includes,
of course, providing sufficient reasons for doubting any assertions in the specification as
to the scope of enablement.” In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993).
Thus, the dispositive issue here is not whether appellants have established that
the disclosure is broadly enabling for the scope of the claims, rather, the issue is
whether the PTO has met its “initial burden of setting forth a reasonable explanation as
to why” it is not.
In the present case, the examiner barely touches on two of the factors to be
considered in establishing undue experimentation: the breadth of the claims, and the
guidance provided in the specification. While we might agree that the first of these
factors, at least, would tend to weigh against a finding of enablement, it is but one of
many relevant factors, yet the examiner has not analyzed it in conjunction with other
relevant factors.
3
Factors to be considered in determining whether a disclosure would
require undue experimentation have been summarized by the
board in Ex parte Forman [230 USPQ 546, 547 (BdPatAppInt
1986)]. They 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 (footnote omitted).
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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