Appeal No. 2005-1247
Application No. 09/963,423 Page 4
28; and (3) that the applied prior art renders the subject mater
of claim 21 obvious within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the rejections advanced by the examiner
Our reasoning follows.
§ 112, first paragraph Rejection
According to the examiner, the specification is non-enabling
since the disclosed weight percent content ranges for the
isocyanate and hydrophilicizing component reactants do not
support the breadth of the appealed claims that are not so
limited to particular weight percent content ranges. (answer,
pages 3 and 4). The examiner appears to be concerned that
appellants’ detailed disclosure of specified weight percentages
of reactant components does not enable a person skilled in the
art to which it pertains, or with which it is most nearly
connected, to make an invention commensurate in scope with the
rejected claims without undue experimentation (answer, pages 3
and 4).
In our view, the examiner has not carried the initial burden
of setting forth evidence or sound technical reasoning which
indicates that one of ordinary skill in the art would not have
been enabled by appellants’ specification to form a solid,
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