Appeal No. 2003-1926 Page 9
Application No. 09/095,842
The purpose of the enablement requirement is to “ensure[] that the public knowledge is
enriched by the patent specification to a degree at least commensurate with the scope of the
claims.” Crown Operations Int’l. Ltd. v. Solutia, Inc., 289 F.3d 1367, 1378-79, 62 USPQ2d
1917, 1924 (Fed. Cir. 2002)(quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys.,
166 F.3d 1190, 1196, 49 USPQ2d 1671, 1675 (Fed. Cir. 1999)). For a VdF dispersion of 200 nm
or less particle size and 30-50 wt % solids content, and less than 1 wt. % fluorine-containing
surfactant, Appellants’ disclosed contribution is limited to the additional presence of a non-ionic,
non-fluorine-containing surfactant. That is what the specification indicates is enabled within the
meaning of 35 U.S.C. § 112, ¶ 1 and Appellants do not provide convincing evidence that the
claimed dispersion could have been made without the non-ionic, non-fluorine-containing
surfactant by one of ordinary skill in the art without undue experimentation at the time of the
invention.
We conclude that the Examiner has established a prima facie case of lack of enablement
under 35 U.S.C. § 112, ¶ 1 which has not been sufficiently rebutted by Appellants.
Written Description
The Examiner rejects all the claims as containing subject matter which was not described
in the specification (Answer, pp. 3-4).
For claims 6-11, the Examiner directs us to pages 3, lines 6-12, page 4, lines 13-21, and
page 6, lines 25-37 as evidence that there is lack of descriptive support. For claims 12-14, the
Examiner states that “[t]here is no mention in the specification of ‘an average particle size of not
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