Appeal No. 1996-0716
Application 08/107,661
our decision.
Implicit in our factual findings with respect to 35
U.S.C. § 101 was a finding that making and using "herbicides
and pesticides" from the intermediates prepared by appellants'
claimed process would have required "undue experimentation" by
the routineer in the art. Whether a disclosure is "enabling"
is a legal conclusion based on the underlying facts. In re
Wands, 858 F.2d 731, 735-37, 8 USPQ2d 1400, 1402, 1404 (Fed.
Cir. 1988); Moleculon Research Corp. v. CBS, Inc., 793 F.2d
1261, 1268, 229 USPQ 805, 811 (Fed. Cir. 1986), cert. denied,
479 U.S. 1030 (1987).
Appellants' request suggests that we misapprehended that
it should have been clear from appellants' specification that
the claimed process was an improvement over the prior art
process of Ludvik. However, on page 5 of our decision we
specifically found that appellants' parenthetical reference to
Ludvik's patent was understood to mean that Ludvik "discloses
the aforementioned known prior art method for preparing the
compounds obtained by appellants' process." Manifestly, we
could not have "overlooked" a fact or an issue we have
specifically addressed in our decision.
Further, appellants now urge that herein claimed process
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