Appeal No. 95-4342
Application 07/938,832
“analyzing structural relationships between monosaccharides of a carbohydrate,” as it
appears throughout the specification and in independent claim 23, would be “understood
in the field of carbohydrate chemistry to mean an analysis establishing the complete
structure of a carbohydrate.” The appellant’s use of the phrase in the specification and
claims appears to be entirely consistent with its use in the prior art. See the Brief, page 6.
To the extent that the examiner argues that the claims encompass inoperative
embodiments, we are not persuaded. First, the examiner’s conclusion is based on an
interpretation of “analyzing structural relationships” which is not justified by the record.
Second, 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).
The examiner has not performed the fact finding needed in order to properly reach a
conclusion of “undue experimentation.”
Accordingly, we reverse the rejection of claims 3 through 7, 14 through 16,
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