Appeal 2007-1200
Application 09/900,251
ANALYSIS
The Examiner walked through each of the In re Wands factors in turn;
however, much of his analysis was cursory and based on conclusory statements
that particular factors supported a conclusion of nonenablement. The Examiner
follows two main lines of reasoning in finding claims 1-40 not to be enabled.
First, the Examiner found that there is a lack of prior art pertaining to the
subject matter of the application (Answer 4). He further found that:
the lack of prior art pertaining to the subject matter of the
application provides evidence for the lack of
predictability in the art. Therefore, since the state of the
prior art refers to the level of skill of a person of ordinary
skill in the art, the specification as filed lacks sufficient
direction or guidance required to meet the enablement
requirement (see MPEP § 2164.05(a)).
(Answer 4). As a result, the Examiner found that the Specification fails to fill the
gap between the knowledge of one of ordinary skill in the art and the applicants’
claimed invention (Answer 4-5). Finally, the Examiner found that
since the applicants specification does not provide
adequate direction and guidance in the practicing of the
claimed invention, and since the art area is relatively
unpredictable and undeveloped, the invention would
require an undue amount of experimentation (see MPEP
§ 2164.06).
(Answer 6).
This first line of reasoning is supported by nothing more than conclusory
statements, without supporting analysis. For example, the base finding that there is
a lack of prior art is presented in a conclusory statement without any analysis or
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