Appeal No. 2006-1963
Application No. 09/951,321
appellant's specification. The appellant has not shown how a selection of
questions, which are not skewed towards those questions, previously answered
incorrectly, is guaranteed, nor does the specification as originally filed show that
the applicant has possession of the claimed feature at the time of filing. The
limitation as claimed constitutes a negative limitation. There is no teaching in the
specification as originally filed that shows the explicit exclusion of selections
based upon incorrectly answered questions. The only positive teaching in the
specification is that the user is not to be presented with the exact same subset of
questions and that this is achieved through a random number generator.
We disagree with the examiner’s rationale. The test for enablement under the
first paragraph of 35 U.S.C. § 112, is whether one reasonably skilled in the art could
make or use the claimed invention from the disclosed subject matter together with
information in the art, without undue experimentation. United States v. Telectronics,
Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert denied, 490 U.S.
1046 (1989). A disclosure can be enabling even though some experimentation is
necessary. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231
USPQ 81, 94 (Fed. Cir. 1986), cert denied, 480 U.S. 947 (1987). As appellant asserts,
we find that appellant’s originally filed specification, on page 23 discusses randomly
selecting the questions of the retest. As the examiner finds, random means “lacking a
definite plan or pattern.” Thus, we find that one skilled in the art would recognize that
randomly selecting the questions means that the questions are selected independent of
any pattern or criteria. As such we hold that appellant’s specification would enable one
skilled in the art to perform a method wherein the retest questions are “selected on a basis
independent of said answers which were answered incorrectly” as a random selection is
such an independent selection. Accordingly, we will not sustain the examiner’s rejection
of claims 28 through 37 under 35 U.S.C. § 112 first paragraph.
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