Appeal No. 1999-0207
Application No. 08/477,560
with these claims.” Answer, page 3. The examiner finds that
“[t]etrakis isocyanate cross-linking caps would yield polymers
different from those disclosed and intended by applicants.” Id.
The examiner further submits that undue experimentation would be
required to produce multidimensional polyurethanes from tetrakis
isocyanates end-capped oligomers (Answer, page 4). The examiner
finds that the area of technology is “complex and unpredictable”
and this alone is enough to create reasonable doubt as to the
accuracy of broad statements put forth as enabling support (id.).
It is well settled that the examiner bears the initial burden
of setting forth a reasonable explanation as to why it is believed
that the scope of protection provided by the claims is not
adequately enabled by the description of the invention provided in
the specification, including the provision of sufficient reasons
for doubting any assertions in the specification as to the scope of
enablement. See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993). Nothing more than objective enablement is
required, and therefore it is irrelevant whether this teaching of
enablement is provided through broad terminology or illustrative
examples. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971).
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