Appeal No. 2004-0369 Page 4
Application No. 09/822,704
presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.). Specifically, the Examiner
concludes that undue experimentation would be necessary to modify the surfaces of the
microparticles and microspheres as claimed because the level predictability in the art is
unknown, there is no guidance in the specification for modifying the surfaces, and there are no
working examples (Final Rejection, pp. 4-5).
Appellants, however, argue that the specification includes a discussion of how to
accomplish microparticle surface modification at page 6, lines 22-27 and how to accomplish
microsphere surface modification at page 16, lines 2-5 (Brief, p. 4). These two sections of the
specification read as follows:
The surface of the microparticles of the present invention can be modified with a
charge or at least one functional group that is hydrophobic or hydrophilic or a
combination thereof. The surface charge can be through a static development or
with the attachment of various ionic groups directly or linked via short, long or
branched alkyl groups.
(specification, p. 6, ll. 23-27).
The surface of the microsphere may be charged through a static development or
with the attachment of various ionic groups directly or linked via short, long or
branched alkyl groups.
(specification, p. 16, ll. 2-4).
The burden is on the examiner to advance acceptable reasoning inconsistent with
enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982). We
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