Appeal No. 2000-1131 Page 8
Application No. 08/505,183
resistance (col. 1, lines 25-27). The fluoropolymers listed in column 1, line 50 to column 2, line
3 inherently have barrier properties against liquids as claimed.
While we reverse the rejection of claims 1 and 4-8 under 35 U.S.C. § 102, we make the
above new ground of rejection under 35 U.S.C. § 103(a) on the basis that there is a prima facie
case of obviousness with respect to the subject matter of claims 1, 4 and 6-8.
Enablement
The Examiner has rejected claims 1 and 3-8 as not enabled on the basis that “[t]he
specification fails to disclose the characteristic physical and chemical properties of the elastomers
in enough detail to enable one of ordinary skill in the art to which the invention is directed to
practice the invention.” (Final Rejection, page 4). In order to establish lack of enablement, the
Examiner must show that one of ordinary skill in the art would not be able to replicate the
claimed invention without undue experimentation. Nat’l Recovery Tech. Inc, v. Magnetic
Separations Sys. Inc., 166 F.3d 1190, 1196, 49 USPQ2d 1671, 1676 (Fed. Cir. 1999). Factors
that are often important in such an analysis are discussed in In re Wands 858 F.2d 731, 737, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). In the present case, the specification indicates that the
elastomers are well known in the art (page 4, lines 13-16) and identifies specific useful
elastomers by chemical name (page 5, lines 16-24, Examples) and Tradename (Examples). The
Examiner has not put forward reasoning or evidence which indicates that undue experimentation
would have been required to replicate the claimed invention. Therefore, the Examiner has failed
to establish a prima facie case of non-enablement.
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