Appeal No. 2004-0369 Page 3
Application No. 09/822,704
2. Claims 1-3, 6-18, 20, and 22-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dupuis in view of Hinks and further in view of Allec. The Examiner’s
reasoning is presented in the Final Rejection, Paper No. 9 (Answer, p. 3).
We reverse with respect to the rejection under 35 U.S.C. § 112, ¶ 1, but affirm with
respect to the rejection under 35 U.S.C. § 103(a). Because our reasons differ from those of the
Examiner, we designate our affirmance as involving a new ground of rejection. Our reasons
follow.
OPINION
Enablement
There are two groups of claims rejected under the enablement requirement of § 112, ¶ 1.
The first group, claims 10-12, is directed to the surface modification of microparticles. These
claims require the surface be modified with a charge, hydrophobic functional groups, hydrophilic
function groups, or a combination thereof. The second group, claims 24 and 25, are directed to
the surface modification of microspheres. Claim 24 requires the surface be modified by
attachment of an ionic group. Claim 25 requires the surface be modified by attachment of an
organic or inorganic material.
The Examiner concludes that the claims are not in compliance with the enablement
requirement of § 112, ¶ 1 based on an analysis of various Wands factors. See In re Wands, 858
F.2d 731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)(Factors to take into consideration
include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance
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