Appeal No. 1997-0140
Application No. 08/266,290
lack of enablement by compelling reasoning or objective
evidence. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971). In particular, the examiner must
demonstrate that one of ordinary skill in the art, based on
the teachings of the specification and state of the prior art,
would not be able to practice the claimed invention without
undue experimentation. In the present case, we find that
appellants' specification and the prior art evidenced by
Markusch, cited by the examiner, would sufficiently apprise
one of ordinary skill in the art which compounds would qualify
as those which generate water within the context of the
claimed invention. It must be borne in mind that it is not a
function of the claims to specifically exclude possible
inoperable substances, and that the mere possibility that a
composition claim embraces inoperable reactants does not
render the claim unduly broad. See In re Dinh-Nguyen, 492
F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974); In re Kamal,
398 F.2d 867, 872, 158 USPQ 320, 324 (CCPA 1968).
We now turn to the examiner's rejection of the appealed
claims under § 103 over the combined teachings of Markusch and
Akiyama. The examiner recognizes that Markusch, who discloses
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