Appeal No. 2003-1926 Page 6
Application No. 09/095,842
fluorine-containing surfactant is present in the dispersion. In fact, the next paragraph explains
that the invention is accomplished through the additional use of non-ionic, non-fluorine-
containing surfactant (specification, p. 4, ll. 13-21). While there is a description of a dispersion
having less than 1 wt. % fluorine-containing surfactant, what is required for enablement is a
disclosure in the specification teaching those skilled in the art how to make and use the full scope
of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). The paragraph at page 4, lines 7-12 does not provide the
necessary enabling disclosure of how to make the dispersion for the full scope of the claim.
Appellants next argue that it is within the skill in the art to modify the parameters set
forth in Comparative Example 3 so as to prepare a particle size within the 200 nm or less range
of claims 6-11 (Brief, pp. 8-9). Comparative Example 3 uses less than 1 wt. % fluorine-
containing surfactant as required by the claims and includes no non-ionic, non-fluorine-
containing surfactant, but the particle size obtained (234.5 nm) is outside the claimed range.
That is why the example is a “comparative example.” Other than the addition of non-ionic, non-
fluorine-containing surfactant, the specification offers no guidance as to how to modify the
parameters of the process of Comparative Example 3 in order to obtain the required particle size.
Nor is there convincing evidence, on this record, indicating that one of ordinary skill in the art
would understand, without performing undue experimentation, how to modify the parameters in
any other way to obtain the claimed dispersion.
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