Appeal No. 95-3936
Application 08/135,324
ordinarily skilled person in the art to determine other useful
agents for preventing neutralization.
Appellants argue that because the use of "chemical
ambients does not involve complex chemical reactions" (page 5
of the main brief), selection of "ambients" or suitable media
would have been readily ascertainable to one skilled in the
art by actually selecting an "ambient" or medium and
determining whether the photoacid becomes neutralized.
Appellants suggest by this argument that if the routineer
tests a candidate for the "ambient" or medium and it prevents
neutralization of photoacids then it is appellants' invention
and the disclosure is enabling. We disagree.
We consider appellants' position to be tantamount to
an invitation to the routineer to experiment. An invitation
to experiment does not constitute enablement, especially
where, as here, there is little or no guidance in the
specification which would direct the routineer in his or her
search for "ambients" or suitable media. Thus, we agree with
the examiner that it would have required "undue"
experimentation by the skilled routineer to find media other
than nitrogen or water which would suit appellants' purpose in
claim 10 for "preventing said photoacid from being
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