Appeal No. 1996-2362
Application No. 08/203,596
In addition, contrary to the examiner’s view,
nonenablement is not established simply because there may be a
large “number of tests required to determine which polymer
blends meet the claimed limitations” (answer, page 9). Such a
number is not the criteria or test for assessing whether a
disclosure is nonenabling because the “experimentation”
required is “undue”. That is, “[t]he test is not merely
quantitative, since a considerable amount of experimentation
is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of
guidance with respect to the direction in which the
experimentation should proceed”. In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), citing Ex parte
Jackson, 217 USPQ 804, 807 (Bd. App. 1982).
In essence, it appears to be the examiner’s opinion that
the appellant should be limited to claims which encompass only
the specific blends of particular polymers disclosed in the
subject specification examples. However, a competitor could
avoid infringing such claims merely by following the
appellant’s disclosure to find a substitute polymer blend. In
order to provide effective incentives, claims must adequately
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