Appeal No. 1998-1006
Application No. 08/499079
the specification would not have enabled one of ordinary
skill in this art to practice the claimed invention without
undue experimentation. Id. Here, the examiner has not
supported his conclusion by any such explanation or
reasons. Hence, the examiner has not met his burden for
establishing a prima facie case. Moreover, upon our
review, we find that the text on page 3, lines 20-21 and
31-33, page 4, lines 17-24, page 8, lines 27-35, and page
9, lines 1-10 enables a person having ordinary skill in the
art to make and use the claimed invention, without “undue
experimentation.” This text sets forth “compostable
thermoplastic resins” useful in appellants’ claimed
invention, as well as more specific types, for example (1)
a thermoplastic polyactic acid polymer resin, (2) a resin
grade or high molecular weight thermoplastic polyester such
as a polyester urethane, or (3) a thermoplastic PHBV
polymer with the tackifying resin of appellants’ invention.
This text also does not limit the claimed thermoplastic
only to the subject matter found on page 9, lines 11-15, as
asserted by the examiner, because it provides for other
types of thermoplastic resins. Moreover, as stated by
appellants on page 5 of their Brief, broad terminology can
be used to provide objective enablement. In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Hence, we reverse the rejection of claims 44-52 under
35 U.S.C. § 112, paragraph 1.
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