Appeal 2007-2236
Application 10/991,738
1 "unexpected" result in the claim. But for a variety of reasons, we are not
2 convinced that the alleged "unexpected" result can be obtained with a
3 combination other than yttrium and barium—not without considerable
4 experimentation. See the factors to be considered in a resolution of whether
5 undue experimentation is involved set out in Ex parte Forman, 230 USPQ
6 546, 547 (Bd. Pat. App. & Int. 1986), those factors having been adopted by
7 the Federal Circuit in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
8 1404 (Fed. Cir. 1988).
9 At this stage, we recognize that both Rupich and the Examiner may
10 have more to add to our analysis during future prosecution. Accordingly,
11 our analysis in this opinion should not be viewed as exhaustive on the
12 enablement subject.
13 The first thing we notice is that all Rupich's examples show use of
14 yttrium yet the claims cover rare earth metals. When we consider Mizuta,
15 we see that significant differences in properties are reported for the use of
16 lanthanum is used vis-à-vis yttrium. While those properties are different
17 from critical current density, we feel comfortable finding that (1) properties
18 may be a function of the rare earth metal used and (2) it may be difficult for
19 one skilled in the art to figure out what other rare earth metals can
20 effectively be used to make Rupich's article while at the same time obtaining
21 the critical current density required by the claims on appeal—assuming the
22 claimed invention is that we have set out above.
23 A second thing readily apparent is that, apart from broad statements
24 defining the invention, the Rupich specification provides no concrete
25 guidance beyond the use of yttrium. While Mizuta describes the use of
15
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