Appeal No. 2003-1867
Application No. 09/151,321
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 737, 8 USPQ2d at 1404.
The alleged absence of specific embodiments illustrating the invention is thus
but one of the factors to be considered in whether undue experimentation may be
required. The rejection asserts that server 6 selects a printer based on stored jobs in
hard disk 206 of the server. The examiner has provided no reasoning or evidence as to
why one skilled in the art would be unable to implement a system, absent undue
experimentation, such that a controller on a network selects a printer based on jobs
stored in a memory of the printer. We conclude that the rejection fails to set forth a
prima facie case for lack of enablement of the claimed subject matter.
Indeed, the examiner’s findings in support of the rejection seem to be based
more on an asserted lack of written description of the invention now claimed, rather
than lack of enablement. To comply with the “written description” requirement of 35
U.S.C. § 112, first paragraph, an applicant must convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the “written description” inquiry, whatever is
now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). However, the invention claimed does not have to be described
in ipsis verbis in order to satisfy the description requirement of 35 U.S.C. § 112, first
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