Appeal No. 1999-1907
Application No. 08/690,409
Enzo Biochem Inc. v. Calgene, 188 F.3d 1362, 1371, 52 USPQ2d
1129, 1135 (Fed. Cir. 1999). That is, even "a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed..." Wands, 858 F.2d at
737, 8 USPQ2d at 1404.
Here, the examiner's rejection does not even mention the
legal test of "undue experimentation," much less specifically
discuss any of the underlying factual inquiries adopted in
Wands. Again, that the "disclosure fails to teach one of
ordinary skill in the art the composition of addition curable
silicone material" or that the complete chemical identity of
Castall S-1332 is not described in the specification is
insufficient to satisfy the examiner's initial burden of proof
as to lack of enablement under 35 U.S.C. § 112, first paragraph.
Specifically, the appellants have argued that the examiner has
mischaracterized the invention as requiring "addition cured
silicone." (Appeal brief, pages 4-5.) According to the
appellants, any solvent-free polymer material other than the two
excluded polymers will work. (Id. at pages 8-9.) The examiner
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