Appeal No. 2001-1290 Page 7
Application No. 08/950,032
exclude * * * possible inoperative substances * * * *’” (quoting In re Dinh-Nguyn,
492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974)). It is only “if the number
of inoperative combinations becomes significant, and in effect forces one of
ordinary skill in the art to experiment unduly in order to practice the claimed
invention, [that] the claims might indeed be [nonenabled].” Id. The examiner has
not shown that the number of potential inoperative embodiments is so high that
an undue amount of experimentation would be expected.
Summary
The examiner has not adequately shown that the balance of the Wands
factors favor a conclusion of nonenablement. Since the examiner bears the
initial burden of showing nonenablement, and since that burden has not been
carried here, we reverse the rejection under 35 U.S.C. § 112, first paragraph.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
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