Appeal No. 2004-0587
Application 09/054,304
the term, “comprising” does not mean that these are the only
elements required for the invention. Thus, the Examiner’s
finding that the additional steps of providing a pseudo
acknowledgment are not recited in Appellants’ claims does not on
its face provide evidence that the claims are not enabled.
However, we do have to consider whether the claims are so
broad that it causes the claims to have a potential scope of
protection beyond what is justified by the specification
disclosure. For us to answer this question, we need to consider
the Wands factors. In particular, we need to consider the
predictability or the unpredictability of the art. We note that
the Examiner has not provided us any factual findings on this
basis. Furthermore, it is noted that “[i]n cases involving
predictable factors, such as mechanical or electrical elements, a
single embodiment provides broad enablement in the sense that,
once imagined, other embodiments can be made without difficulty
and their performance characteristics predicted by resort to
known scientific laws.” See In re Fisher, 427 F.2d 833, 839, 166
USPQ 18, 24 (CCPA 1970). Without further factual findings, we
fail to find that the Examiner has established a prima facie case
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