Appeal 97-1458
Application 08/329,940
perfluorinated liquid compound are miscible. Clearly some
experimentation is necessary, but the specification provides
the guidance on how that experimentation is to be conducted.
The mere fact that some experimentation may be necessary does
not mean that the experimentation is per se undue. The
examiner has not sustained the necessary burden of proving
that any experimentation which might be necessary would be
"undue" experimentation.
To the extent the examiner's rejection is bottomed on
undue experimentation, it is reversed.
b.
The examiner also bottoms the rejection on applicants'
use of the formula C F NO to define one of the perfluorinated
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liquid compounds which are said to be suitable for making a
single phase liquid within the scope of the invention. The
examiner determined that a person having ordinary skill in the
art would not have known the structural formula of C F NO.
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The examiner also indicates that referring to C F NO as a
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"perfluoronitroalkane" does not help. We note that not only
do applicants set out the formula, but they also indicate that
the compound represented by the formula is sold by 3M under
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