Appeal No. 2006-1784 Παγε 4
Application No. 10/668,819
(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.
Once the examiner has established a reasonable basis to question the
enablement provided for the claimed invention, the burden falls on the appellant to
present persuasive arguments, supported by suitable proofs where necessary, that one
skilled in the art would be able to make and use the claimed invention using the
disclosure as a guide. See In re Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286,
294 (CCPA 1973). In making the determination of enablement, the examiner shall
consider the original disclosure and all evidence in the record, weighing evidence that
supports enablement1 against evidence that the specification is not enabling.
Thus, the dispositive issue is whether the appellant's disclosure, considering the
level of ordinary skill in the art as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's invention without undue
experimentation. The threshold step in resolving this issue as set forth supra is to
1 The appellant may attempt to overcome the examiner's doubt about enablement by pointing to
details in the disclosure but may not add new matter. The appellant may also submit factual affidavits
under 37 CFR § 1.132 or cite references to show what one skilled in the art knew at the time of filing the
application.
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