Appeal No. 1997-2063
Application No. 08/433,818
materials disclosed in the present specification. However, as
properly argued by appellants, unpredictability is but one of
eight factors to be considered in determining the enabling
qualities of a specification. Another criteria to be considered
is whether the specification provides sufficient guidance for one
of ordinary skill in the art to practice the invention within the
scope of the claims without undue experimentation. On this
point, appellants have submitted into evidence a Declaration by
Dr. Stuart A. Wolf, an expert in the field of superconductive
materials. In relevant part, the Declaration provides expert
testimony that "only about 2-3 man days of experimentation" would
be required of one of ordinary skill in the art to determine
which superconductive materials would be suitable for use in the
present invention (see page 4 of Declaration). Dr. Wolf bases
this testimony on the fact that appellants' specification teaches
that suitable superconductive materials "have a structure,
lattice constants, and coefficient of thermal expansion that
closely match those of LaAlO3 and are chemically compatible with
LaAlO3" (page 4 of Declaration). While the examiner is not
persuaded by the Declaration because, according to the examiner,
the Declaration is only relevant to specific superconductive
materials, Dr. Wolf states that appellants' specification "also
teaches how to select other perovskite superconductors suitable
for deposition, without undue or extensive experimentation"
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