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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