Appeal No. 2006-0809 Page 5
Application No. 10/887,631
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The examiner’s analysis must
consider all the evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. Id., 8 USPQ2d at 1404.
In his articulation of the rejection in both the final office action and the
examiner’s answer, the examiner fails to focus on the above-enumerated factors
and fails to explain how the specification lacks sufficient disclosure to teach one
skilled in the art to make and use the claimed invention without undue
experimentation. The examiner merely poses questions to the appellants and fails
to make any specific findings of fact supported by the evidence or draw
conclusions based on these findings of fact.
The examiner makes note of information that is missing from the
specification that he feels would have been important to teach one skilled in the art
how to make and use the invention. He fails, however, to explain why one skilled
in the art at the time of the invention could not have supplied this missing
information without undue experimentation.
For example, the examiner asserts that the specification as filed is missing
certain information including: how the sensing member is to be mounted; where it
is to be mounted; what will move it along a rail; or how it is enabled to generate
data indicative of an actual alignment of the leading edge of a print medium
relative to the feedpath. (Examiner’s Answer, p. 3). In response to the appellants’
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