Appeal No. 2003-1926 Page 13
Application No. 09/095,842
BRADLEY R. GARRIS, Administrative Patent Judge, concurrence-in-part,
dissent-in-part:
I concur with the reversal of the examiner’s rejection of claims 6-17 as failing to satisfy
the written description requirement in the first paragraph of section 112. However, I respectfully
dissent from the majority’s affirmance of the rejection of claims 6-11 as failing to satisfy the
enablement requirement of this paragraph. This non-enablement rejection is improper for the
reasons set forth in the appellants’ brief and below.
I begin my dissent by clarifying two pivotal aspects of the enablement issue before us.
First, though not expressly stated by the majority, claims 6-11 do not exclude a non-ionic,
non-fluorine-containing surfactant. Rather, these claims broadly encompass aqueous dispersions
having characteristics of the type here claimed including an embodiment which contains non-
ionic, non-fluorine-containing surfactant as well as an embodiment which does not contain this
surfactant. The former embodiment is indisputably enabled. It follows that the non-enablement
viewpoint of my colleagues relates only to that portion of claim scope which encompasses the
latter embodiment.
Second, contrary to the impression made by the majority’s opinion, the appellants’
specification does not disclose that the presence of non-ionic, non-fluorine-containing surfactant
is essential to formation of the here claimed aqueous dispersions. While the specification
discloses that these dispersions form in the presence of this surfactant, the specification contains
no teaching whatsoever that these dispersions are incapable of forming in the absence of such
surfactant. In point of fact, therefore, my colleagues’ non-enablement position is based only on
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