Appeal No. 2003-1926 Page 16
Application No. 09/095,842
With the foregoing in mind, it is appropriate to here stress that nothing more than
objective enablement is required by the first paragraph of section 112, and accordingly it is
irrelevant whether the enablement teaching is provided through broad terminology or illustrative
examples. In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). In the
case before us, the appellants indisputably have provided objective enablement via illustrative
examples for the embodiment encompassed by claims 6-11 wherein the here claimed aqueous
dispersion includes a fluorine-containing surfactant in combination with a non-ionic, non-
fluorine-containing surfactant. Presumptively as a matter of law, the appellants also have
provided objective enablement for the additional embodiment encompassed by these claims
wherein the aqueous dispersion includes the fluorine-containing surfactant only.
For the reasons set forth in the brief and above, neither the majority nor the examiner has
provided an acceptable, reasonable explanation as to why the appellants’ claimed scope of
protection is not adequately enabled by the specification disclosure. Id. To the contrary, the
record of this appeal goes beyond the legal presumption of enablement by presenting evidence
than an artisan would be capable of preparing the appellants’ aqueous dispersion without using a
non-ionic, non-fluorine-containing surfactant. Under these circumstances, the non-enablement
rejection should be reversed..
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