Appeal No. 95-1628
Application 08/067,750
appealed claim 1 as a whole that the “plastic” must be
“foamed” and “containing cells” which cells contain “an
oligomer” or “a polymer” derived from the specified “foaming
monomer.” The examiner has not carried his burden of
providing a reasonable explanation, supported by the record as
a whole, why the assertions as to the scope of objective
enablement set forth in the specification with respect to the
“foamed plastic” of appealed claim 1 is in doubt, including
reasons why the description of the invention in the
specification would not have enabled one of ordinary skill in
this art to practice the claimed invention without undue
experimentation, and has thus failed to establish a prima
facie case under the enablement requirement of the first
paragraph of § 112. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971).
We now turn to the examiner’s rejection of the appealed
claims based on prior art, mindful of the construction that we
have made of appealed claim 1. The examiner points out that
Gavoret, Matsunaga, Nemphos and Chandalia recite at least the
use of butadiene or cyclopentadiene in the processes disclosed
therein, which monomers having a conjugated unsaturated carbon
group. The examiner particularly notes that
Gavoret specifically incompletely polymerizes the
conjugated diene so that it can be contained in the
closed cells of the polymer after it is foamed. [Answer,
page 3.]
Thus, the examiner concludes that since
heat is used in all the references to bring about the
foaming of the polymers to be foamed ... it appears that
it would be inherent that the references of record also
produce oligomers or polymers. [Answer, page 5.]
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