Appeal No. 97-1449
Application 08/312,036
Upon consideration of the appellant's APPEAL BRIEF
(Paper 19) and the EXAMINER'S ANSWER (Paper 20), there being
no reply brief, it is
ORDERED that the decision of the examiner rejecting
claims 11 and 13-18 is reversed.
The examiner believes that disclosure of four species is
not an enabling disclosure commensurate in scope with the
breadth of the claims. In essence, the examiner--without
saying so in so many words--is concerned that undue
experimentation would be necessary to determine suitable
monomers which could be used in the claimed recording
material. The difficulty with the examiner's position is that
it is not supported by the evidence. Compare Ex parte Forman,
230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986) (discussion of
factors to be considered in determining whether undue
experimentation would be necessary to justify broad claim),
which was approved by the Federal Circuit in In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), and see
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971).
REVERSED
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