Appeal No. 2003-1867
Application No. 09/151,321
known in the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co.,
730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (citing In re Myers, 410
F.2d 420, 161 USPQ 668 (CCPA 1969)). “A patent need not teach, and preferably
omits, what is well known in the art.” Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1534, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987). “Not every last detail is to be
described, else patent specifications would turn into production specifications, which
they were never intended to be.” In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316
(CCPA 1962).
The examiner bears the initial burden of setting forth a reasonable explanation
as to why the scope of protection provided by the claims is thought to be not adequately
enabled by the description of the invention provided in the specification. If that burden
is met, the burden then shifts to the applicant to provide proof that the specification is
indeed enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993).
“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). The 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
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007