Appeal No. 2003-1926 Page 8
Application No. 09/095,842
ordinary skill in the art would have known that such a reduction in concentration would occur is
unclear. There is neither guidance in the specification that such a result will occur nor, on its
face, is such a result predictable. Enablement cannot be based on such a level of unpredictability.
See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970)(The scope of enablement
varies inversely with the degree of unpredictability of the factors involved). Nor would
experimenting with a number of known processes to see which might be successful involve
routine experimentation in the absence of some guidance as to what direction to proceed.
Appellants have failed to establish that the required experimentation is not undue
experimentation.
Appellants lastly acknowledge that the question of whether the non-ionic, non-fluorine-
containing surfactant must be present in order to obtain a particle size below 200 nm could
possibly be pertinent to the issue of whether claims 6-11 read on an inoperative dispersion. But
Appellants argue that “it is not a function of the claims to specifically exclude possible
inoperative combinations.” (Brief, p. 16). Appellants cite a number of cases to support this
proposition (Brief, p. 16). But the present case differs from those cases in that the only operative
embodiment disclosed in the specification is the one containing non-ionic, non-fluorine-
containing surfactant. The surfactant is essential, according to the specification, in order to
obtain an operative dispersion within the parameters of the claims. Appellants must limit their
claims to what they have disclosed in their specification as essential. See In re Mayhew, 527
F.2d 1229, 1232-34, 188 USPQ 356, 357-59 (CCPA 1976).
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