Appeal No. 1996-3292
Application 07/991,467
"In order to satisfy the enablement requirement of § 112, paragraph 1, the specification must
enable one of ordinary skill in the art to practice the claimed invention without undue experimentation."
National Recovery Technologies Inc. v. Magnetic Separation Sys. Inc., 166 F.3d 1190, 1196, 49
USPQ2d 1671, 1676 (Fed. Cir. 1999). In the instant application, appellants disclose that a low smoke
producing liner, which is an object of their invention (page 7, lines 16 to 21), may be formulated of an
oxygen containing polymer, such as those recited in claims 1 and 20 (page 6, lines 1 to 4), together with
a curing agent; also (page 7, lines 7 to 12):
As mentioned above, the present invention also consists of a filler such as
dicyandiamide (DCDA), ammonium nitrate, or silica. It is found that this filler further
mitigates heavy black smoke production. As a result of the use of the filler in the overall
liner formulation, it is found that the composition of the present invention produces much
less smoke output than conventional liners.
Independent claims 1 and 20 set forth, inter alia, the disclosed polymers and the above-described three
specific fillers, together with their percentage ranges, which appellants disclose will yield the desired
liner composition. Also, the specification includes examples of compositions within these parameters.
We do not regard the disclosure of Daume to which the examiner refers, supra, as showing that
"appellant's [sic] specification is lacking". Although Daume may attribute a reduction in smoke to the
absence of aromatic content, appellants disclose that it is due to the combination of polymers, fillers,
etc. disclosed by them. Moreover, even if appellants' claimed composition would not achieve low
smoke output, the claims do not recite low smoke properties, but only require that the composition be
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