Appeal No. 1996-2362
Application No. 08/203,596
We will not sustain this rejection for the reasons fully
detailed by the appellant in the brief and reply brief. We
add the following comments for emphasis.
In support of his nonenablement position regarding the
here claimed polymers, the examiner argues that “[t]here is no
way of determining, without individually testing every single
one of these polymers, whether it would be suitable as a
liquid toner and whether it meets the limitations of
Appellant’s claim” (answer, page 8). However, even if this
argument is factually sound, it does not militate against
enablement. This is because the enablement criteria of
section 112 simply does not require the capability of
determining suitability in the absence of testing. As the
appellant has repeatedly explained, such a requirement would
render all “experimentation” “undue”, since “experimentation”
implies that the success of a particular activity is
uncertain. In re Angstadt, 537 F.2d 498, 503, 190 USPQ 214,
218-219 (CCPA 1976). Furthermore, it is well settled that
some experimentation is permissible under the enablement
requirement of section 112. Fields v. Conover, 443 F.2d 1386,
1390-1391, 170 USPQ 276, 279 (CCPA 1971).
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007