Appeal 2007-0408
Application 10/150,014
possession of the invention. The invention is, for the purposes of the
‘written description’ inquiry, whatever is now claimed.” Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991).
To support a rejection under the written description requirement, the
examiner may meet the initial burden by pointing to the fact that the claim
reads on embodiments outside the scope of the description. In re Werthiem,
541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976). However, the
burden is somewhat higher for a rejection based on lack of enablement.
With regard to enablement, the burden is on the examiner to “advance
acceptable reasoning inconsistent with enablement.” In re Strahilevitz,
688 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982). In meeting this
burden, the examiner must take into account the knowledge of those of
ordinary skill in the art and the unpredictable nature of the art. In re Bowen,
492 F.2d 859, 862, 181 USPQ 48, 50 (CCPA 1974). The question is
whether, once imagined, other embodiments could be made without
difficultly and their performance characteristics predicted by resort to known
scientific laws or whether unpredictability is such that it would be difficult
for the ordinary artisan to extend the teaching to other embodiments. Id.
Only if the examiner advances acceptable reasoning inconsistent with
enablement, does the burden shift to appellant “to show that one of ordinary
skill in the art could have practiced the claimed invention without undue
experimentation.” Strahilevitz, 688 F.2d at 1232, 212 USPQ at 563.
D. Analysis
Focusing on the written description requirement first, we find that a
preponderance of the evidence supports a finding of lack of written
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