Ex Parte Svendenius et al - Page 6

              Appeal 2007-1454                                                                                         
              Application 11/088,528                                                                                   

         1          light to the circumstances surrounding the origin of the subject matter sought                     
         2          to be patented.  [Id., at 17-18, 148 USPQ at 467.]                                                 
         3 “While the sequence of these questions might be reordered in any particular case,                           
         5    the factors continue to define the inquiry that controls. If a court, or patent                          
         6    examiner, conducts this analysis and concludes the claimed subject matter was                            
         7    obvious, the claim is invalid under  103.”  KSR Int’l v. Teleflex Inc., 127 S.Ct.                       
         8    1727, 1734, 82 USPQ2d 1385, 1391 (2007).                                                                 
        10                                          ANALYSIS                                                           
        11          Turning first to the enablement rejection on page 4 of the Examiner’s                              
        12    Answer, we note that the Examiner has stated the wrong test.  “The examiner is                           
        13    unable to determine if the disclosure clearly provides support for how the brake                         
        14    control system is operative to determine a target position of a brake component                          
        15    . . . .”  However, the test for enablement is an objective test based on persons                         
        16    skilled in the art rather than a subjective test based on the understanding of an                        
        17    Examiner.  Turning to page 8 of the Answer, we note that the Examiner articulates                        
        18    the correct standard and that is whether undue experimentation would be required                         
        19    by the artisan to make and use the claimed invention.  The Examiner states that the                      
        20    claim recitation of determining a targeted position of the at least one movable                          
        21    brake component based at least in part on a relationship between an actual tire/road                     
        22    friction force and a targeted tire/road friction force is not enabled without undue                      
        23    experimentation.  We do not credit this argument of the Examiner.  We are in                             
        24    agreement with the Appellants that this subject matter is found in the prior art.  In                    
        25    fact, Appellants admits that Matsumoto discloses this claimed step.  We agree.                           
        26          The Examiner also states that the determination of the actual tire/road                            
        27    friction force and targeted road/friction force would vary with each and every                           


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