Appeal 2007-1174
Application 11/001244
establishing lack of enabling disclosure, such as by showing undue
experimentation, rests with the Examiner. See In re Wright, 999 F.2d 1557,
1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Some routine
experimentation is permissible to practice the invention as claimed as long
as the experimentation is not “unduly extensive.” See Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has not met the initial
burden of establishing a lack of enabling disclosure. It is not necessary that
a patent applicant test all the embodiments of the invention. See In re
Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218 (CCPA 1976). The
Examiner has not established what experimentation would have been
necessary to practice the invention as claimed, much less that this
experimentation would have been “undue.” See Wands, supra. Merely
because the prior art shows different fixturing times for different types of
substrates does not constitute undue experimentation or lack of enabling
disclosure. Therefore, we determine that the Examiner has not met the
initial burden of establishing that the Specification disclosure lacks
enablement. Accordingly, we cannot sustain the rejection of claims 1-8
under the first paragraph of 35 U.S.C. § 112.
B. The Rejection based on § 103(a)
We determine the following factual findings from the record in this
appeal:
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