Appeal 2007-2486
Application 10/429,369
interpretation and the plain meaning of the claim phrase “in the absence of
an oxidizing agent” indicates that no oxidizing agent is used in the process
of claims 11-15.
Applying the relevant Wands Factors 1-3, 7, and 8 above to claims 11
and 13 using the broadest reasonable interpretation of the phrase “in the
absence of an oxidizing agent,” we determine the following: (1) the claim is
broad so as to include no oxidizing agent, (2) Appellant has provided no
working examples as to how the oxidation could be produced without an
oxidizing agent, (3) Appellant has provided no guidance on how to effect
oxidation without an oxidizing agent, (4) it is unpredictable how oxidation
could occur without using an oxidizing agent, and (5) a large number of
experiments would be necessary to achieve oxidation without an oxidizing
agent (if oxidation without an oxidizing agent is even possible).
Additionally, Appellant admits that an oxygen-containing compound is
required in order for a compound to be oxidized (Br. 19). From these factors
and Appellant’s admission, we conclude that undue experimentation would
be required to make or use the invention as recited in claims 11-15, such that
claims 11-15 are not enabled.
Accordingly, we affirm the Examiner’s §112, 1st paragraph, rejection
of argued claims 11 and 13 and of claims 12, 14, and 15 (which stand or fall
with claims 11 and 13) as failing to comply with the enablement
requirement.
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