Appeal 2007-0113
Application 10/353,776
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (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.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Considering these factors, we find that practice of Appellants’
invention in light of Appellants’ underlying disclosure would require undue
experimentation. Specifically, Appellants’ Specification provides very little
guidance as to what the optimum formation number and pulsing frequency
should be (Fact 4) and provides no working example (Fact 6). The behavior
of fluid flow from a jet nozzle is very complicated, as evidenced by Crow
(Fact 11). Appellants have provided no evidence that the state of the art was
such that the optimum formation number and pulsing frequency would have
been apparent to one of ordinary skill in the art. While we find that the level
of skill in Appellants’ art is high, jet nozzle fluid flow is an unpredictable
art, as evidenced by Crow (Fact 11). Finally, as noted above in our
discussion regarding the indefiniteness rejection, the claims are broad, in
that they do not specify how the formation number F and pulsing frequency
are controlled or limit any of the operating parameters in any way.
In light of the above, we conclude, on balance, based on the record
before us, that the Examiner has met the initial burden of advancing
acceptable reasoning that Appellants’ Specification fails to provide an
enabling disclosure of the claimed invention so as to shift the burden to
Appellants to show that one of ordinary skill in the art would have been able
to make and use the invention without undue experimentation and
Appellants have not discharged that burden. The rejection is sustained.
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