Appeal 97-1458
Application 08/329,940
The examiner's first lack of enablement rejection seems
to be bottomed on two principal grounds.
a.
One ground is that the specification fails to provide
"adequate guidance as to the proportions at which the
component solvents are miscible" (Examiner's Answer, page 4).
The examiner apparently reasons that undue experimentation
would be necessary to determine the proportions of mono- or
dichlorobenzotrifluoride which would be miscible with the
perfluorinated liquid compound. No cogent analysis has been
presented by the examiner. Nor has the examiner addressed the
well-established factors which go into an analysis of whether
undue experimentation would be necessary to practice an
invention described in a specification. See, e.g., In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988), citing with approval, Ex parte Forman, 230 USPQ 546,
547 (Bd. Pat. App. & Int. 1986) (discussion of factors to be
considered in determining whether undue experimentation would
be necessary to justify broad claim).
The specification reveals how one goes about determining
whether a mono- or dichlorobenzotrifluoride and a
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