Appeal 2006-3268
Application 10/479,696
“pneumatic connection” and an “additional line” connected to the pneumatic
connection (Answer 3). The Examiner determined that “claims 13 and 20
cannot . . . [include Appellant’s] Figure 1 [embodiment]” (i.e., the pneumatic
embodiment) because “Figure 1 does not have ‘a pressure recording element
recording pressure changes at an output side of the metering device facing
away from the line’” as recited in claim 13 (Answer 3).
Appellant argues that the Examiner has failed to show that undue
experimentation would be required to make or use the invention recited in
claim 20 (Br. 4). Appellant contends that the Examiner failed to address any
of the factors delineated by the United States Court of Appeals for the
Federal Circuit in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988), for determining whether a specification satisfies the
enablement requirement (Br. 4). Appellant also argues that his Specification
discloses that “pressure recording element” recited in claim 13 includes a
“pneumatic pressure recording element, such as in the form a line 12
connected to pneumatic connection 13, illustrated in Figure 1” (Br. 5).
Appellant argues that “line 12 records the pressure changes in the mixing
chamber 8, which is at an output side of the metering device 7” (Br. 5).
We agree with Appellant that claim 20 satisfies the enablement
requirement of 35 USC § 112, 1st ¶.
A determination of whether a claimed invention is enabled is a
question of law based on underlying factual findings. In re Vaeck, 947 F.2d
488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. v. E.I.
du Pont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.
Cir. 1984). The standard for determining whether the specification meets
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