Ex parte Robson
Appeal 2008-006370, Serial No. 10/635,156, Tech. Center 3700
Decided April 30, 2010
As part of the enablement rejection, the Examiner first interpreted the term "guide rail," finding two alternative constructions. The BPAI rejected one of those constructions, and so only addressed enablement under the second, in which projection 130 corresponded to the claimed "guide rail." The BPAI then found that:
The Examiner presented no findings, rationale, or analysis as to why it would require, or how it would amount to, undue experimentation on the part of persons of ordinary skill in the art to make and use other embodiments falling within the scope of those terms, i.e., embodiments having more than one projection 130 ...
My two cents: I agreed with the reversal of the rejection, though I don't see why the Board discussed undue experimentation.Yes, it's generally the appropriate standard for enablement (see MPEP 2164.01), though Examiners don't always deal with it in this manner. However, it seems to me you don't even need to address undue experimentation if you have explicit disclosure, and I think that's the case here.
The Board decided that the claimed "guide rail" was supported by disclosed projection 130. That should have been the end of the analysis: the claim recites "at least one guide rail"; that limitation is met by the single disclosed projection 130. The fact that more than one guide rail/projection anticipates or infringes seems to me irrelevant to the enablement analysis.
I can see that the undue experimentation analysis could come into play – theoretically – if the specification disclosed a single guide rail yet claimed a plurality of guide rails. On the other hand, can you think of a real scenario where undue experimentation would be needed to get from one instance of a part to multiple instances of the same part?
On the other hand, disclosing a single X yet claiming multiple Xes might get you a Written Description rejection (for original claims) or a New Matter objection (for amended claims). Sure, you can figure out how to make an embodiment with multiple Xes ... but did you really contemplate that possibility such that you possessed multiple Xes?
In fact, that's essentially the position the Examiner took in Robson. The Examiner's Answer explained that a New Matter objection might be appropriate, but not until the issue of alternative interpretations for "guide rail" raised by the Examiner was settled. The Answer went on to state that if the Board decided that the claimed guide rail corresponded to projection 130, then a new matter rejection would be appropriate and in such case "the examiner requests that the appeal be remanded so that a new matter rejection may be made."
You probably won't be surprised to hear that the application in Robson was a continuation, since Written Description and New Matter issues are more likely in continuations. The continuation also claimed priority to a foreign (UK) application, and the claims at issue looked quite different than the foreign claims.