Appeal No. 1998-2288
Application 08/600,150
the claimed invention given the disclosure and examples of
appellants’ specification (Answer, page 11). However, the
only determinations the examiner has made are that the art is
unpredictable (based on appellants’ arguments regarding the
rejection under 35 U.S.C. § 103) and there is no guidance in
the specification as to which compounds encompassed by the
claims would function as pigments and which would not (Answer,
pages 8-11). Unpredictability is but one factor to be
considered in determining undue experimentation. See In re
Wands, 858 F.2d 731, 735, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). Furthermore, although the amount of direction or
guidance presented is another factor in determining undue
experimentation, guidance as to which compounds will not
function as pigments is not required. See Wands, supra;
Answer, page 11. Finally, the examiner admits that “[t]here
is no indication that some of the compounds meeting the
formula would not be suitable as pigments, nor that any
experimentation would be required at all to find suitable
pigments within the claimed formula. In such a case, the
specification would be enabled....” Answer, page 12.
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