Appeal No. 2003-1926 Page 7
Application No. 09/095,842
Appellants further rely upon a declaration, which they designate the “first Tsuda
declaration,” which they say demonstrates enablement (Brief, p. 9). But what the first Tsuda
Declaration demonstrates is merely that one of the inventors was able to take the dispersion of
Comparative Example 5, which contains 2 wt. % fluorine-containing surfactant, an amount
above the claimed 1 wt. %, and perform additional dilution and concentration steps to obtain a
dispersion with less than 1 wt. % fluorine-containing surfactant as well as the claimed particle
size and solids content. That one of the inventors could, at some point in time, after an unknown
amount of experimentation, obtain the dispersion without non-ionic, non-fluorine-containing
surfactant is not particularly probative on the question of whether undue experimentation would
be required of one of ordinary skill in the art to make dispersion for the full scope of the claims at
the time of the invention.
Further with regard to the first Tsuda Declaration, the process used involves dilution and
concentration steps performed after preparing the dispersion of Comparative Example 5.
Appellants acknowledge that the dilution and concentration steps are not described in their
specification (Brief, p. 10). But they argue that any person skilled in the art would know how to
so dilute or concentrate an aqueous dispersion. The problem with this argument is that dilution
and concentration are just two of a myriad of known procedures that one of ordinary skill in the
art could theoretically perform on a dispersion. The Tsuda Declaration indicates that the
application of those steps to a dispersion containing 2 wt. % fluorine-containing surfactant would
result in a reduction of fluorine-containing surfactant to less than 1 wt. %. Just how one of
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