Appeal No. 2004-0323 Page 7
Application No. 09/716,045
and use the claimed invention from the disclosure coupled with information known in
the art without undue experimentation.3 Without a showing as to why one skilled in the
art could not make and use the claimed invention without undue experimentation, the
examiner has not met the required initial burden to establish a prima facie case of a
lack of enablement.
For the reasons set forth above, the decision of the examiner to reject claims 1
to 4 and 6 to 13 based on the enablement requirement of 35 U.S.C. § 112, first
paragraph, is reversed.
The written description rejection
We sustain the rejection of claims 3 and 8 under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the
appellants, at the time the application was filed, had possession of the claimed
invention.
3 Factors that an examiner should consider 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 skill of those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988) citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
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