Ex Parte Satzler

Board of Patent Appeals and Interferences

Jul 31, 2002

08987977 (B.P.A.I. Jul. 31, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONNIE L. SATZLER
____________
Appeal No. 2001-2118
Application No. 08/987,977
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 6 and 13. Claims 7 through 12 stand withdrawn from
consideration pursuant to an election of species requirement.
These claims constitute all of the claims in the application.

Appellant’s invention pertains to a method for synchronizing
the steering in a machine between a first steering arrangement
having steerable wheels and a second steering arrangement having
non-steerable drive units. A basic understanding of the
invention can be derived from a reading of exemplary claim 1, a
Appeal No. 2001-2118
Application No. 08/987,977
2
copy of which appears in ‘APPENDIX A-1" of the “SUPPLEMENT TO
BRIEF ON APPEAL” (Paper No. 21).
The following rejection is the sole rejection before us for
review.
Claims 1 through 6 and 13 stand rejected under 35 U.S.C.
§ 112, first paragraph, as lacking enablement in the underlying
specification.
The full text of the examiner’s rejection and response to
the argument presented by appellant appears in the final
rejection and the answer (Paper Nos. 15 and 18), while the
complete statement of appellant’s argument can be found in the
main brief (Paper No. 17).

OPINION
In reaching our conclusion on the enablement issue raised in
this appeal, this panel of the board has carefully considered
appellant’s specification and claims, and the respective
viewpoints of appellant and the examiner. As a consequence of
our review, we make the determination which follows.
Appeal No. 2001-2118
Application No. 08/987,977
3
We do not sustain the examiner’s rejection. Our reasons
follow.
At the outset, we keep in mind that the test regarding
enablement is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
and In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA
1974). The experimentation required, in addition to not being
undue, must not require ingenuity beyond that expected of one of
ordinary skill in the art. See In re Angstadt, 537 F.2d 498,
504, 190 USPQ 214, 218 (CCPA 1976).
It is also well settled that the examiner has the initial
burden of producing reasons that substantiate a rejection based
on lack of enablement. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982) and In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1971). Once this is done, the
burden shifts to the appellant to rebut this conclusion by
presenting evidence to prove that the disclosure is enabling.
In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973),
Appeal No. 2001-2118
Application No. 08/987,977
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cert. denied, 416 U.S. 935 (1974) and In re Eynde, 480 F.2d 1364,
1370, 178 USPQ 470, 474 (CCPA 1973).
Turning now to the circumstances before us, the examiner has
particularly focused upon the “calculating” step of appellant’s
method claims in asserting that the claimed invention is not
enabled by the application disclosure. However, nowhere within
the rejection has the examiner addressed the critical matter of
establishing that appellant’s teaching would require undue
experimentation to make and use the invention now claimed. Thus,
the readily apparent deficiency of the examiner’s enablement
rejection is its failure to satisfy the test for enablement; a
test, which as set forth earlier, mandates a showing of undue
experimentation. Since the rejection on appeal lacks the
requisite showing of undue experimentation, we cannot sustain the
rejection of appellant’s claims under 35 U.S.C. § 112.
Appeal No. 2001-2118
Application No. 08/987,977
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The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC:pgg
Appeal No. 2001-2118
Application No. 08/987,977
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J.W. BURROWS
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