Appeal 2006-3268
Application 10/479,696
the enablement requirement is whether the experimentation needed to
practice the invention is undue or unreasonable. Mineral Separation v.
Hyde, 242 U.S. 261, 270 (1916), cited in In re Wands, 858 F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the
statute does not use the term “undue experimentation,” it has been
interpreted to require that the claimed invention be enabled so that any
person skilled in the art can make and use the invention without undue
experimentation. Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
Appellant’s claim 13 recites “. . . a pressure recording element
recording pressure changes at an output side of the metering device . . ..”
Appellant’s Specification describes how the pressure recording may be
accomplished with either a pneumatic “line 12” or an electrical “pressure
sensor 70” (Specification 4: 20-26). The pneumatic pressure recording
element uses “line 12” to sense variations in pressure in mixing chamber 8
and to convey the sensed pressure variation relief valve 11. Similarly,
Appellant’s Figure 2 embodiment (i.e., electrical embodiment) uses
“pressure sensor 70” as the pressure recording element to sense pressure
variations in mixing chamber 8 and to convey the sensed pressure variation
to relief valve 11 via controller 40. In either the pneumatic or electrical
pressure recording element embodiment, the pressure is “recorded” to the
extent that the pressure value or variation is used to control relief valve 11.
The Examiner provides a dictionary definition of “record” or
“recording” (i.e., “to indicate, read;” “to give evidence of”) (Answer 7) in an
attempt to demonstrate that only Appellant’s Figure 2 embodiment (i.e., the
electrical pressure recording element embodiment) is included in claim 13.
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