Appeal 97-1458
Application 08/329,940
In light of the record, we vacate the examiner's
rejections to the extent they are based on the unknown formula
of C F NO sold as PF-5052 by 3M and whether C F NO sold as PF-5 11 5 11
5052 by 3M can properly be characterized as a
"perfluoronitroalkane" and remand. On remand the examiner
should make appropriate findings and place in the record
evidence to support those findings so that the issues of (1)
whether the description of the material C F NO sold as PF-5052
5 11
by 3M is enabling and (2) whether C F NO sold as PF-5052 by 3M
5 11
can properly be characterized as a "perfluoronitroalkane" can3
be developed to the point where appellate review is possible.
2. The examiner's second lack of enablement
rejection
The second lack of enablement rejection appears to be
bottomed on a rationale that the enabling disclosure in the
specification is not commensurate in scope with the breadth of
the claims.
On the record before us, a more apt description might be perfluoro-N-aliphatic
morpholines or perfluorinated N-aliphatic cyclic aminoethers. We voice no opinion on
what precise term might be used to replace "perfluoronitroalkanes," a term we think may
well be indefinite because C F NO does not have a nitro ()NO ) group.5 11 2
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