Appeal No. 1995-1304
Application No. 07/947,071
would cast doubt on the objective truth of statements
contained in the specification and relied on for enabling
support. We believe that appellants' specification (including
EXAMPLES I through XV) imparts ample information to persons
skilled in the art, enabling them to make and use the full
scope of the claimed subject matter.
Referring to page 13, TABLE 1 of the specification, the
examiner argues that "some compounds work, some do not"; and,
for this reason, the specification is inadequate to support
the full scope of the appealed claims. See the Examiner's
Answer, page 4. However, as stated in a similar context in
Atlas Powder Co. v. E.I. Du Pont De Nemours and 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. . .
." 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. . . .
That, however, has not been shown to be the case
here. [Citations omitted.]
On this record, the examiner has not established that the
number of inoperative compounds encompassed by the claims is
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