Appeal No. 2003-0843 Page 8
Application No. 09/198,728
network costs by removing lightly loaded links, to form an
optimal network topology. Thus, from appellants’ disclosure, we
find adequate support for an artisan to make and use appellants’
invention without undue experimentation.
The examiner's assertion (answer, page 6) that the
disclosure of the processors is not in enabling detail, is
misplaced. The issue is whether an artisan, having knowledge of
the art, would know how to make and use the invention without
undue experimentation. Because the examiner has not provided an
analysis of any of the Wands factors; has not provided reasons
why the examine feels that an artisan would not know how to make
and use the invention from appellants’ disclosure and information
known in the art, and has not provided reasons why the examiner
feels that undue experimentation would be necessary to make and
use the invention (as opposed to some experimentation, which is
okay), we find that the examiner has failed to establish a prima
facie case of lack of enablement.
As to the examiner's assertion that it is unclear as to
whether the disclosed invention is directed to a simulation or to
the design of an actual network (answer, page 3), we find from
our review of the specification that the invention is directed to
optimizing network topology associated with network design, and
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007