Appeal No. 95-4485
Application 08/097,589
why, in view of appellants’ specification, one of ordinary
skill in the art would not have been able to determine,
through no more than routine experimentation, the combinations
of ingredient ratios and temperatures recited in appellants’
claims at which the additional claim limitation is met which
requires that an oil-in-water emulsion is not formed.
For the above reasons, we find that the examiner has not
carried his initial burden of establishing a prima facie case
of lack of enablement. Consequently, we do not sustain the
nonenablement rejection.
Rejection for lack of
adequate written descriptive support
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement, if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In
re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA
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