Appeal No. 2003-2146 Page 10
Application No. 09/546,143
considering this issue, we note that appellant is not required to disclose every
parameter encompassed by the claims. See In re Angstadt, 537 F.2d 498,
503,190 USPQ 214, 218 (CCPA 1976). As set forth above, it is examiner’s
burden to show that one skilled in the art would have to resort to undue
experimentation in order to practice the invention as broadly claimed. We are not
persuaded by the examiner’s reliance on In re Howarth, 654 F.2d 103, 107, 210
USPQ 689, 693 (CCPA 1981) in support of his assertion that appellant failed to
“provide the starting material for R4, nor a source for an ‘amino protecting
group’….” As Howarth, F.2d at 105, 210 USPQ at 691-92 recognizes, “a patent
applicant need not include in the specification that which is already known to and
available to the public.” In our opinion, on this record, the examiner failed to
meet his evidentiary burden of establishing that a person of ordinary skill in the
art would not be able to practice the claimed invention without undue
experimentation. As set forth in Atlas Powder Co., v. E.I. DuPont De Nemours &
Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984) “[t]he fact that
some experimentation is necessary does not preclude enablement; what is
required is that the amount of experimentation ‘must not be unduly extensive.’”
Finally, we note that the examiner’s rationale is internally inconsistent.
First the examiner finds appellants’ specification “enabling for R4 as a tert-butyl
ester, tert-butyl carboxylate, or tert-butoxycarbonyl…” yet later finds “undue
experimentation is inevitable for one skilled in the art to make and use
compounds with R4 as a group other than tert.-butoxycarbonyl.”
On reflection, it is our opinion that the examiner failed to meet his burden
of establishing that appellants’ disclosure does not enable the full scope of the
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007