Appeal No. 1996-2123
Application No. 08/069,458
Even if some of the claimed combinations were inoperative, the claims are not necessarily
invalid. AIt is not a function of the claims to specifically exclude . . . possible inoperative
substances . . .. In re Dinh-Nguyen, 492 F.2d 856, 859-59, 181 USPQ 46, 48 (CCPA
1974)(emphasis omitted). Accord, In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789,
793 (CCPA 1974); In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331, 334-35 (CCPA
1971). Of course, if the number of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment unduly in order to practice the
claimed invention, the claims might indeed be invalid. See, e.g., In re Cook, 439 F.2d
730, 735, 169 USPQ 298, 302 (CCPA 1971).
The specification, of this application, discloses how to mutate and screen for a biologically pure strain of
Acetobacter having the claimed characteristics. See e.g., Specification, pages 28-37. In view of this, the
examiner=s analysis does not support the conclusion that the claims include a significant number of
inoperative combinations that would require one of ordinary skill in the art to experiment unduly in order to
practice the clamed invention.
Accordingly, we reverse the rejection of the claims under 35 U.S.C. ' 112, first paragraph.
Having determined that the examiner failed to meet her burden under 35 U.S.C. ' 112, we find it
unnecessary to discuss appellants= Declarations, relied upon by appellants to rebut the examiner=s position.
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