Appeal No. 1997-3870
Application No. 08/421,055
distinct from the enablement requirement. “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.’” In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Whether making and using
the invention as claimed would have required undue
experimentation is a legal conclusion based upon several
underlying factual inquiries. See In re Wands, 858 F.2d 731,
735-37, 8 USPQ2d 1400, 1402-04 (Fed. Cir. 1988).
The examiner finds that the specification, at page 27, ll.
10-22, clearly indicates that epoxy-polyester blends must be
fully thermoset/crosslinked when employed as a dimensionally
stable film (Answer, page 6). Appellants argue that the claimed
word “thermosetting” refers to compositions which are not
completely set, as used in the art and the specification (Brief,
page 14). Appellants cite page 29, ll. 23-27, of the
specification, for the disclosure of optional curing of
dimensionally stable films (Brief, page 15).
We determine that the examiner has not met the initial
burden of establishing why one of ordinary skill in the art could
not practice the subject matter as claimed without undue
experimentation. The examiner has not made the necessary factual
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