Appeal No. 95-0801
Application 08/018,830
USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971).
We find that the examiner has not met this initial burden
of establishing lack of enablement. We agree with the
examiner that many catalytic processes are unpredictable. See
In re Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218 (CCPA
1976). However, the examiner’s reliance on Robin to show
unpredictability in the catalysts of the claimed process is
misplaced. Robin, at column 2, lines 34-41, discloses that
the onset of catalytic activity of alkali metal catalysts in
the preparation of isocyanurates is unpredictable but does not
teach that the components of the catalyst per se are
unpredictable.
Additionally, it must be noted that the examiner only
attempts to show the unpredictability of catalysts in the art
but fails to analyze any other factors involved in the
determination of undue experimentation. See In re Wands,
supra. As stated by the court in In re Angstadt, supra, each
case must be determined on its own facts. However, here, as
in Angstadt, appellants have provided those skilled in the art
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