Appeal No. 1997-2385
Application No. 08/271,571
Supplemental answer, p. 2), the examiner once again cites no evidence and makes no
Wands analysis showing on this record that one of ordinary skill in the art would have had
any particular difficulty in carrying out the claimed invention without undue experimentation.
Moreover, it is not a function of the claims to specifically exclude possible inoperative
embodiments. Atlas Powder Co. v. E.I. Dupont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 414 (Fed. Cir. 1984). Of course, if the number of inoperative
embodiments 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
nonenabled. However, that has not been shown to be the case here.
In view of the foregoing, we find that the examiner has not established a prima facie
case of lack of enablement. Accordingly, we will not sustain this rejection.
2. Rejection of claims 30-34 under § 112, second paragraph, as indefinite
We begin with the proposition that "the definiteness of the language employed [in a
claim] must be analyzed -- not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971) (footnote omitted).
Claim 30 requires that the process provide "harvested plants of one variety."
According to the examiner, the use of the phrase "one variety" in claim 30 is indefinite
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