Appeal No. 2003-1993
Application No. 09/470,526
whether this teaching is provided through broad terminology or illustrative examples.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contained sufficient
information regarding the subject matter of the appealed claims as to enable one skilled
in the pertinent art to make and use the claimed invention. In order to establish a prima
facie case of lack of enablement, the examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the claimed invention. See
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(examiner must provide a reasonable explanation as to why the scope of protection
provided by a claim is not adequately enabled by the disclosure). See also In re
Morehouse, 545 F.2d 162, 192 USPQ 29 (CCPA 1976).
The threshold step in resolving this issue is to determine whether the examiner
has met his burden of proof by advancing acceptable reasoning inconsistent with
enablement. “Factors to be considered by the examiner in determining whether a
disclosure would require undue experimentation have been summarized by the board in
Ex parte Forman, [230 USPQ 546, 547 (Bd Pat App Int 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 pre-
dictability or unpredictability of the art, and (8) the breadth of the claims.” (footnote
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