Ex parte SHINOZAKI et al. - Page 6




          Appeal No. 1997-3655                                                        
          Application No. 08/351,136                                                  

          which to carry this burden is well known.  See, for example,                
          In re Wands, 858 F.2d 732, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.              
          1988).  The requisite analysis simply has not been performed                
          in this case.                                                               
               As a final matter, it appears to us that the examiner                  
          would limit the appealed claim coverage to polymers which are               
          the same as those specifically disclosed in the appellants’                 
          specification or are “insubstantially” different from these                 
          specifically disclosed polymers.  It has long been                          
          established, however, that to provide effective incentives,                 
          claims must adequately protect inventors.  Therefore, to                    
          demand that the first to disclose shall limit his claims to                 
          what he has found will work would not serve the constitutional              
          purpose of promoting progress in the useful arts.  In re                    
          Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976).                    
               In light of the foregoing, we cannot sustain the                       
          examiner’s section 112, first paragraph, rejection of the                   
          appealed claims as being nonenabled.                                        
               The decision of the examiner is reversed.                              
                                      REVERSED                                        



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