Appeal No. 97-3290
Application 08/465,896
ascertaining a surface-active agent, i.e., and operable agent,
consistent with claim 1. We do not consider it to be
reasonable on the part of an artisan to attempt the arduous
and uncertain task of seeking to reverse engineer the testing
carried out by appellant to see if individuals (a panel of
odor specialists) could possibly be found who would also give
average results for operable and inoperable agents, as
disclosed by appellant (specification, page 9 and Tables 1
through 3). In light of the above, the circumstances of the
present case clearly reveal to us that an undue, if not
impossible, effort is required for one seeking to practice the
present invention, as broadly claimed, notwithstanding
appellant’s disclosure of certain suitable and unsuitable
surface-active agents. Thus, we conclude that the claims on
appeal are based upon an underlying disclosure which fails to
enable the breadth of the claims.
The argument advanced by appellant (brief, pages 2 and 3)
fails to persuade us that the examiner erred in rejecting the
claims on appeal under 35 U.S.C. § 112, first paragraph. We
appreciate appellant’s view that the claims are intended to
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