Appeal No. 1996-0047
Application No. 08/047,758
factors enumerated in Ex parte Forman, 230 USPQ 546, 547 (Bd.
Pat. App. & Int. 1986).
Here, the examiner states (Answer, page 7) that:
Appellant indicates that the subject matter of
the instant claim is commensurate with the scope of
the written disclosure in that the four
monocarboxylic acids recited in the claims are the
same four monocarboxylic acids disclosed in the
original specification. The examiner agrees with
appellants’ statement and further point out that the
claims as originally filed were directed only to
dicarboxylic acids. The four monocarboxylic acids
are only mentioned on page 10, lines 18-19 of the
specification and are not mentioned anywhere else
throughout pages 1-52 of the specification including
the examples and data, as well as, the claims as
originally filed in the parent application.
However, the examiner has not explained why such a limited
disclosure on monocarboxylic acids does not enable one of
ordinary skill in the art to make and use the claimed subject
matter without undue experimentation. The examiner simply has
not taken into consideration in her analysis, inter alia, the
nature of the invention involved and information known to
those skill in the art. In this regard, we observe that the
examiner has not responded to appellants’ arguments and
evidence referred to at page 7 of the Brief. According to
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