Appeal No. 96-3109
Application No. 08/445,121
(i) There is no suggestion, either in the
specification, the prior art or in the Examiner’s
comments, that the area of technology is
particularly complex or unpredictable. The Examiner
has not provided one single piece of evidence to
support the position that the selection of
wavelengths requires undue or unreasonable
experimentation nor any evidence to refute the
Applicants’ assertion and showing that this would
not require a worker of ordinary skill to depart
from what is considered normal in this art.
(ii) The examples given indicate that there is a
wide choice of wavelengths available to the user and
that the user is not to be bound to any one
wavelength. By the Examiner’s logic, any wavelength
not specifically recited in the specification could
not be validly claimed.
(iii) The specification gives the preferred, and
best mode examples sufficient [to] place the
invention clearly in the hands of a worker of
ordinary skill in the art and to indicate where
changes might be made.
(iv) The Examiner is seeking to limit the claims to
the specific sources and wavelengths given in the
specification and as the court stated in In re
Gaffe, “To demand that the first to disclose shall
limit his claim to what he has found will
work...would not serve the purpose of promoting the
progress of the useful arts.” (Brief-page 6.)
Practice of the invention must not require undue
experimentation. The key word is “undue” not
“experimentation”. Whether undue experimentation is required
is a conclusion reached by weighing many factual
considerations. The only fact presented by the Examiner is
that the particular examples recited in the specification do
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