Appeal No. 2002-2288
Application No. 09/198,727
Cir. 1988). That some experimentation may be required is not
fatal; the issue is whether the amount of experimentation
required is “undue.” Id. At 736-37, 8 USPQ2d at 1404.
A conclusion of lack of enablement must first be made by the
Examiner, based upon facts.
“By now it is well settled that the examiner bears the
initial burden of providing reasons why a supporting
disclosure does not enable a claim.” In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971) The Examiner
must assess the state of the art in order to determine the
level of ordinary skill. In re GPAC Inc., 57 F.3d 1573, 35
USPQ2d 1116 (Fed. Cir. 1995).
Among the facts to be considered when arriving at the legal
conclusion of whether the claimed invention is enabled within the
specification are:
The question of whether making and using the invention would
have required “undue experimentation” depends on several
underlying factual inquiries including: (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. Wands, 858 F.2d at 736-37, 8
USPQ2d at 1404.
We conclude that the examiner has failed to carry the burden
of showing that the claimed subject matter is not enabled. As a
consequence, we reverse this rejection.
First, in attacking enablement, the examiner contends that
neither the claim nor the specification provides any description
of the apparatus that outputs the calculated values, and that no
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