Appeal No. 2004-2208
Application No. 10/158,988
1999). That is, even “a considerable amount of experimentation
is permissible, if it is merely routine, or if the specification
in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should
proceed...” Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
Here, the specification provides explicit guidance with
respect to the direction in which the experimentation should
proceed in determining suitable catalysts. (Specification, page
9, lines 18-26.) Given this guidance, we hold that the examiner
has not adequately established that the experimentation would be
undue rather than considerable but routine.
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 112, ¶1, of appealed claims 1 through 4, 6
through 16, and 18 through 21 as failing to comply with the
enablement requirement.
35 U.S.C. § 102(b)/103(a)
We are in complete agreement with the examiner’s concise
and cogent analysis.
Seneker describes aliphatic diamine-extended
polyurethane/urea spandex-type elastomers. (Column 1, lines 4-
15.) Specifically, Seneker teaches that the polyurethane/urea
is prepared by a “prepolymer process” in which a polyol
6
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