Appeal No. 1998-2587
Application No. 08/451,993
USPQ2d 1618, 1623 (Fed. Cir. 1996) (quoting Ex parte Jackson, 217 USPQ 804,
807 (Bd. App. 1982)). See also In re Vaeck, 947 F.2d 488, 495,
20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (“That some experimentation may be
required is not fatal; the issue is whether the amount of experimentation required
is ‘undue.’” (emphasis in original); In re Angstadt, 537 F.2d 498, 504, 190 USPQ
214, 219 (CCPA 1976) (“The key word is ‘undue,’ not ‘experimentation.’”).
The fact that a claim encompasses inoperative embodiments does not
necessarily make the claim non-enabled. See Atlas Powder Co. v. E.I. Du Pont
De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 414 (Fed. Cir. 1984).
Of course, “if the number of inoperative combinations 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 [non-enabled].” Id.
The potential difficulties pointed out by the examiner are not sufficient to show
that the number, if any, of inoperative embodiments encompassed by the claims
is so large that undue experimentation would be required practice the claimed
invention.
The examiner also seems not to have fully considered all of the Wands
factors, including the state of the art, the level of skill in the art, and the guidance
provided by the specification. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). Organic chemistry is a well-established field and
practiced by researchers with a high degree of skill. Surely those skilled in the
art would be aware that certain salts would be likely to be toxic or water-
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