Appeal No. 2004-0576 Page 6
Application No. 10/087,374
the instant figures and specification fail to disclose how and by what means the
capacitors and control circuitry are arranged or mounted or provided within the
frame. It is incumbent upon the specification to disclose the specifics of how and
by what means the capacitors and control circuitry are arranged or mounted or
provided within the frame.
However, the examiner has not provided any explanation in the statement of the
rejection before us in this appeal as to why the appellants' disclosure, considering the
level of ordinary skill in the art as of the date of the appellants' application, would not
have enabled a person of such skill to make and use the appellants' invention without
undue experimentation. Factors that an examiner must 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.4
In this case, the examiner has not properly weighed the above-noted factors.
While the examiner in the response to argument section of the answer (pp. 4-6) has
pointed out various design considerations which one skilled in the art would need to
take into account in building a boomer for generating acoustic signals in a marine
4 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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