Appeal No. 2006-0809 Page 6
Application No. 10/887,631
argument accusing the examiner of failing to give proper credit to the
sophistication of persons skilled in the art, the examiner responds merely by stating
that the drawings do not show “a sensing member mounted for movement so as to
accommodate print media of different dimensions” and that the specification does
not provide enough detail for one skilled in the art to be able to make the invention
of claim 25 without undue experimentation. (Examiner’s Answer, p. 4). No
reasons in support of this conclusion of undue experimentation are offered.
Rather, the examiner’s position reduces to a bald assertion that a person skilled in
the art would require undue experimentation to mount the sensing member on a
carriage or otherwise for movement so as to accommodate print media of different
dimensions. Cf. Ex parte Lemak, 210 USPQ 306 (BPAI 1981) (reversing an
examiner’s rejection for lack of enablement because the examiner failed to provide
reasons in support of his assertion of undue experimentation).
We note that not everything necessary to practice the invention need be
disclosed. In fact, what is well known is best omitted. In re Buchner, 929 F.2d
660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). All that is necessary is that
one skilled in the art be able to practice the claimed invention, given the level of
knowledge and skill in the art. Nowhere in the examiner’s position do we find that
he took into consideration the knowledge and skill in the art or the disclosure in
paragraph [0028] of the specification where it is indicated that,
[A]n alternative embodiment in which the print media is
aligned to the left hand side of the feedpath has one fixed
sensor, on the left hand side, and one movable sensor that
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