Appeal No. 1999-0207
Application No. 08/477,560
The examiner has failed to provide sufficient and convincing
reasoning or evidence to meet the initial burden of establishing
non-enablement. The examiner does not provide any support for his
conclusion that tetrakis isocyanate cross-linking caps would yield
polymers different from those disclosed and intended by appellants
(Answer, page 3). Even assuming arguendo that the examiner had
credible reasoning or evidence to support this conclusion, the
inclusion of one species within the generic scope of claim 14 that
would not produce the desired polymer composite blend does not
render the claim unpatentable for lack of enabling disclosure. One
of ordinary skill in the art would have recognized if this species
of end cap oligomers yielded products outside the scope of the
claims and accordingly the claims would not include this species.
See In re Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218 (CCPA
1976). Furthermore, merely because the art is “complex and
unpredictable” is not alone sufficient for non-enablement of broad
statements in the specification, but is only one factor to be
considered. See In re Wands, 858 F.2d 731, 735-737, 8 USPQ2d 1400,
1402-1404 (Fed. Cir. 1988).
For the foregoing reasons and those set forth in the Brief and
Reply Brief, we determine that the examiner has not met the initial
burden of establishing that appellants have failed to fulfill the
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