Appeal No. 2002-0089
Application No. 09/331,647
personal cleansing composition by adding an effective amount of an aqueous phase-inversion
temperature emulsion. According to the examiner, the specification does not describe what
refatting properties are and how the emulsion enhances these properties. (Office Action, Paper
No. 5). As noted in appellants’ Reply Brief, the use of a personal cleansing composition can
cause naturally present fats to be removed from skin. Appellants’ explain that the term
“refatting” is used in the art to refer to the replacement of at least some of these naturally
occurring fats. (Reply Brief, Paper No. 14, p. 2). This definition of “refatting” is consistent with
appellants’ use of that term in their specification. (See, e.g., p. 1, lines 7-25).
To comply with the enablement requirements of 35 USC §112, first paragraph, a
specification must adequately teach how to make and how to use a claimed invention throughout
its scope, without undue experimentation. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d
1362, 1371, 52 USPQ2d 1129, 1135 (Fed. Cir. 1999); In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)(“Although not explicitly stated in section 112, to be
enabling, the specification of a patent must teach those skilled in the art how to make and use the
full scope of the claimed invention without ‘undue experimentation.’”). Thus, the scope of
enablement is that which is disclosed in the specification plus the scope of what would be known
to one of ordinary skill in the art without undue experimentation. National Recovery
Technologies, Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, 1196, 49 USPQ2d 1671,
1676 (Fed. Cir. 1999).
The examiner has failed to demonstrate that one skilled in the art would not be able to
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007