Appeal No. 1999-1685
Application 08/564,345
As set forth in Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d
1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative, the claims are not
necessarily invalid. "It is not a function of the claims to specifically exclude . . .
possible inoperative substances . . . ." In re Dinh-Nguyen, 492 F.2d 856, 858-59,
181 USPQ 46, 48 (CCPA 1974) (emphasis omitted). Accord, In re Geerdes, 491
F.2d 1260, 1265, 180 USPQ 789, 793 (CCPA 1974); In re Anderson, 471 F.2d
1237, 1242, 176 USPQ 331, 334-35 (CCPA 1973). Of course, if the number of
inoperative combinations becomes significant, and in effect forces one of
ordinary skill i n the art to experiment unduly in order to practice the claimed
invention, the claims might indeed be invalid. See, e.g., In re Cook, 439 F.2d
730, 735, 169 USPQ 298, 302 (CCPA 1971).
In this case, the examiner has not established that a person having ordinary skill in the
art would have had to experiment unduly in order to practice the claimed invention.
Rather, the examiner sets up a "straw man" argument. The examiner argues
that a radical derived from alumaborazine fits the recitation of "a saturated or
unsaturated nitrogen-containing 5- or 6-membered heterocyclic radical" in claim 1; that
alumaborazine "has never been made" and constitutes an "impossible" heterocyclic;
that applicants' specification does not teach starting materials which would be
necessary for preparing alumaborazine; and, accordingly, that applicants' specification
does not teach any person skilled in the art how to make the alumaborazine
embodiment covered by the claims on appeal. The argument is manifestly untenable.
As stated i n Atlas Powder Co. v E.I. Du Pont De Nemours & Co., 750 F.2d at 1576, 224
USPQ at 414, it is not a function of the claims to specifically exclude possible
inoperative substances. Likewise, as the court stated in a similar context in In re
Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976), "nobody will use them
[inoperative embodiments] and the claims do not cover them." Cf Ex parte Breuer,
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