Appeal No. 2003-1512 9
Application No. 09/256,709
depending on the measurement technique used, one
skilled in the art seeking to use a polymer of a specific
molecular weight would necessarily have to know the
type being referred to. [Answer, page 4.]
Stated otherwise, it is the examiner’s position that, “[b]y failing to disclose the
type of molecular weight, the specification does not enable one skilled in the art
to make and use the claimed invention without ‘undue experimentation.’” See
Answer, page 6.
The claims are indeed broad and determining the particular molecular weight
designation would undoubtably be time consuming. However, it is the initial burden of the
PTO to show that the disclosure entails undue experimentation. See In re Angstadt,
537 F.2d 498, 503, 504, 190 USPQ 214, 219 (CCPA 1976). Moreover as stated in
Ex Parte Jackson, 217 USPQ 804, 807 (Bd. App. 1982), “[t]he determination of what
constitutes undue experimentation in a given case requires the application of a standard of
reasonableness, having due regard for the nature of the invention and the state of the art.”
Furthermore, “[t]he test is not merely quantitative, since 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 to enable the determination of how to practice a desired
embodiment of the invention claimed.”
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