Appeal No. 1997-3951
Application 08/238,987
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).
Suffice it to say, the examiner has not explained why the number of “inoperative
species” is so significant that practice of the claim throughout its scope would require
undue experimentation.
The rejection of the claims under 35 U.S.C. § 112, first paragraph
(enablement) is reversed.
NEW GROUND OF REJECTION UDNER 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection.
Claims 1, 3 through 8 and 10 through 18, all the claims pending in the
application, are rejected under the judicially created grounds of obviousness-type
double patenting over the claims of the `638 patent.
At the time of the final rejection, all pending claims stood rejected on
obviousness-type double patenting grounds on the basis of the claims of the `638
patent. See Paper No. 14, page 5. Therein, the examiner acknowledged
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