Appeal No. 1996-3292
Application 07/991,467
(ii) Although the dibutyltin dilaurate may only be a cure catalyst for some of the polymers recited in
claim 1, claim 5 does not recite that it is a catalyst, but simply recites a percentage range of the
compound. Thus, as appellants argue on page 5 of their reply, the scope of claim 5 is not indefinite
"since it merely requires the presence of dibutyltin dilaurate in the [claimed] composition."
(iii) We do not consider the recitation that the composition is "formulated such that it is capable of
providing an adhesive and insulation layer [etc.]" to be indefinite, since in essence all this recitation sets
out is, according to the specification, the result of the composition previously set forth in claims 1 and
20.
(b) 35 U.S.C. § 112, First Paragraph
The examiner finds that appellants have not complied with the enablement requirement of §
112, first paragraph, because (amended answer, page 4):
[s]ince appellants are vigorous in arguing the excellent low smoke properties alleged for
the claimed composition, it would appear that this is in fact a critical feature of their
invention, although not now claimed, MPEP 2164.08(c). When one regards the prior
art, Daume, e.g., where the use of aliphatic polyethers and polyesters is taught as
producing lower smoke, with examples that show that aromatic content produces more
smoke, it is apparent that appellant's specification is lacking. Nowhere in the claims is
there any recitation beyond "polyethers, polyglycols, polyesters, . . . ." There are a few
limited examples of the invention that are described and can be practiced, yet, it is not
clear what variable are necessary to obtain the taught and vigorously argued benefits.
Thus, undue experimentation within the broad outlines of the claim limitations would be
required to practice the full claimed breadth of the invention.
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