Appeal No. 95-0798
Application 08/042,200
in the instant specification” (answer: p. 3). The examiner’s theory for lack of enablement is as
follows:
The instant specification discloses that it is known in the art to enrich the amount of
the claimed desired isomer in the claimed isomer mixture (page 1, background) and
yet no prior art reference of record teaches the use of any hydrofluorination catalyst
to selectively react HCl with the undesired isomer for this purpose. It is clear,
therefore, that the use of a hydrofluorination catalyst to accomplish enriching the
amount of the desired isomer by hydrochlorination would have been unpredictable to
one of ordinary skill in the art.
It is this unpredictability which would result in the requirement for undue
experimentation to determine which of the virtually unlimited catalysts included by the
instant claims would cause selective reaction of one of the isomers in the reactive
mixture.
The problem of selection of a suitable catalyst is exacerbated by the claimed
requirement to use a “fluorination catalyst” to perform a hydrochlorination reaction.
In fact, claim 1 requires nothing more of the catalyst than that it be a “fluorination
catalyst”. It is incredible to urge that one of ordinary skill in the art would be able to
determine without undue experimentation which of the virtually limitless number of
“fluorination catalyst(s)” included by the claimed process would result in a selective
hydrochlorination reaction of one component of a mixture of reactive isomers from
the presentation of two examples in the specification. [Answer: pp. 3-4; emphasis in
the original.]
The determination of enablement is a question of law based on underlying factual findings.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. V. E.I.
Du Pont De Nemours & Co., 750 F.2d 1569, 1513, 224 USPQ 409, 411 (Fed. Cir. 1984). In
determining whether a disclosure would require undue experimentation to make the claimed subject
matter, the examiner must consider the quantity of experimentation necessary, the amount of direction
or guidance presented, the presence or absence of working examples, the nature of the invention, the
state of the prior art, the relative skill of those in the art, and the predictability or unpredictability of
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007