Appeal No. 95-0801
Application 08/018,830
with a large but finite list of catalyst components (see the
specification, pages 3-6), have actually carried out 25
examples of varying scope, and have presented guidelines
requiring only simple, routine experimentation. We find that
the evidence as a whole negates the examiner’s position that
persons of ordinary skill in this art must engage in undue
experimentation to determine what catalyst components will
work. The key word is ?undue?, not experimentation. See In re
Angstadt, 537 F.2d at 503, 190 USPQ at 219.
For the foregoing reasons, we find that the examiner has
failed to meet the initial burden of presenting any evidence
or reasoning as to why appellants’ disclosure is insufficient
to
enable one of ordinary skill in the art to carry out the
invention as claimed. Accordingly, the rejection of claims 1
through 6 under 35 U.S.C. § 112, first paragraph, is reversed.
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