Ex parte BORS et al. - Page 4

          Appeal No. 95-0365                                                          
          Application 07/921,537                                                      

          para. 3.  We agree.  It is well established that to satisfy the             
          enablement requirement of 35 U.S.C.  112, first paragraph, the             
          specification must teach those skilled in the art how to make and           
          use the full scope of the claimed invention without undue                   
          experimentation.  PPG Indus. Inc., v. Guardian Indus. Corp.,                
          75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996); In re            
          Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513; In re Vaeck,             
          947 F.2d 488, 495-96, 20 USPQ2d 1438, 1444-45 (Fed. Cir. 1991).             
          In the case before us, we do not find any guidance or teachings             
          in the specification as to how to make and use the claimed                  
          compositions without the presence of a metal drier.  In fact, to            
          the contrary, the referenced sentence from p. 12 of the                     
          specification explicitly states that without drier the                      
          autoxidation process is so slow that it has no practical use.               
          Cf. Brenner v. Manson 383 U.S. 519, 534-35 (1966) (“The basic               
          quid pro quo contemplated by the Constitution and the Congress              
          for granting a patent monopoly is the benefit derived by the                
          public from an invention with substantial utility.  Unless and              
          until a process is refined and developed to this point-- where              
          specific benefit exists in currently available form-- there is              
          insufficient justification for permitting an applicant to engross           
          [in] what may prove to be a broad field”).                                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007