Appeal No. 95-0802
Application 07/814,078
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of the
invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
Finally, there is no evidence of record which would indicate that the claims
encompass a significant number of inoperative embodiments. As set forth in Atlas
Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409,
414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative, the claims are
not necessarily invalid. "It is not a function of the claims to specifically
exclude . . . possible inoperative substances . . . . In re Dinh-Nguyen, 492
F.2d 856, 859-59, 181 USPQ 46, 48 (CCPA 1974) (emphasis omitted).
Accord, In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793 (CCPA
1974); In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331, 334-35
(CCPA 1971). Of course, if the number of inoperative combinations
becomes significant, and in effect forces one of ordinary skill in the art to
experiment unduly in order to practice the claimed invention, the claims
might indeed be invalid. See, e.g., In re Cook, 439 F.2d 730, 735, 169
USPQ 298, 302 (CCPA 1971).
Accordingly, we reverse the rejection of claims 47 through 56 under 35 U.S.C. §
112, first paragraph.
Obviousness
7
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