Appeal No. 1995-2785
Application No. 07/576,423
Having carefully reviewed the examiner's statement, we find no
fact-based analysis of the specification and the relevant
prior art which would support a conclusion of non-enablement.
Apparently, the examiner expresses concern that appellants'
claims "read on" some unspecified inoperative embodiments.
However, as stated in Atlas Powder Co. v. E.I. Du Pont Demours
& 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 embodiments encompassed by claims 17
through 19, 21 through 23, 26, and 30 is significant or "in
effect forces one of ordinary skill in the art to experiment
unduly in order to practice the claimed invention." The
examiner's conclusion of non-enablement is not adequately
supported by facts and cannot stand.
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