Appeal No. 1998-0138
Application 08/381,809
The rejection of claims 6, 7 and 18 under 35 U.S.C. § 112, ¶ 1, as being broader than
the enabling disclosure
The examiner entered a new ground of rejection in his Answer (Paper 15),
The entire statement of this rejection follows:
Claims 6, 7 and 18 are rejected under 35 U.S.C. 112, first paragraph,
because the specification, while being enabling for the unsubstituted species (in
general) of the claimed catalysts, the specification does not reasonably provide
enablement for the “substituted” catalysts with respect to the R' group of the
said claims. The specification does not enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make the
invention commensurate in scope with these claims.
Applicants do [not] have proper basis for every known species of
substituent.
Answer, p. 5. Claims 6, 7 and 18 specify that the palladium compounds may include “a carboxylic
acid radical of the formula OCOR’ in which R’ is an unsubstituted or substituted alkyl, cycloalkyl, or
aryl radical having 1-20 carbon atoms . . . .” In the examiner’s view, applicants’ written description
does not teach any one skilled in the art to make and use the invention where R’ is substituted alkyl,
cycloalkyl, or aryl radical having 1-20 carbon atoms.
In order to be enabling, a specification “must teach those skilled in the art how to make and use
the full scope of the claimed invention without ‘undue experimentation.’” PPG Industries Inc. v.
Guardian Industries Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996); In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d
488, 495-96, 20 USPQ2d 1438, 1444-45 (Fed. Cir. 1991).
[A] specification disclosure which contains a teaching of the
manner and process of making and using the invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as in compliance with the enabling requirement of the first
paragraph of Section 112 unless there is reason to doubt the
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