Appeal No. 96-3938
Application No. 08/288,861
The examiner has rejected the appealed claims under the
first paragraph of section 112 because lines 19 and 20 on
specification page 12 disclose certain compounds which may be
alternatively used for plasticizing oils as having a
particular range of average molecular weights without
specifying “whether the cited molecular weights are weight,
number, viscosity or Z average molecular weights” (answer,
page 3). However, the examiner has not explained, and we do
not independently perceive, why this lack of specificity would
prevent one with ordinary skill in this art from selecting and
using without undue experimentation the aforementioned
compounds as plasticizing oils in the here claimed
composition. Even if this were not so, the appealed claims
still would be enabled contrary to the examiner’s view. This
is because none of these claims is limited to the earlier
mentioned compounds or molecular weights as a plasticizing oil
for the here claimed composition.
For these reasons, we can not sustain the examiner’s
section 112, first paragraph, rejection of claims 10 through
25 for lack of enablement.
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