Appeal No. 95-3615
Application No. 08/003,401
claims, it is appropriate to emphasize that the test for undue
experimentation vis à vis enablement 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. Ex
parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986);
cf., In re Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286,
294-295 (CCPA 1973). From our perspective, the record
reflects that any experimentation required to practice the
appellant’s claimed invention would be routine rather than
undue for an artisan with ordinary skill.
In making the rejection before us, the examiner in
essence has attempted to limit the appellant to claims
involving the specific materials disclosed in the subject
specification. However, to provide effective incentives,
claims must adequately protect inventors. To demand that the
first to disclose shall limit his claims to what he has found
will work or to materials which meet the guidelines specified
for "preferred" materials in a process such as the one here
involved would not serve the constitutional purpose of
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