Appeal No. 96-2808
Application 08/102,708
U.S.C. § 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue experimentation. In re Scarbrough, 500
F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974); In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). The Federal Circuit has held that a determination of whether a disclosure would
require undue experimentation should consider (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the
nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breath of the claims. In re Wands, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). On this record before us, the examiner has not met her burden.
The examiner has merely stated that the hydrocarbon containing source stream is limited to
particular sources. She has not established that the breadth of the claims would require undue
experimentation by a person having ordinary skill in the art to practice the claimed invention. The claims
are interpreted in light of the specification as it would be interpreted by one of ordinary skill in this art.
Gechter v. Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir.
1997); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We find that the portions of the
specification referred to by the examiner clearly set forth examples of hydrocarbon containing source
streams which would be within the scope of the objected to language. The examiner has not presented an
analysis based upon scientific reasoning to show that a person having ordinary skill in the art would not be
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