Appeal No. 2005-1247
Application No. 09/963,423 Page 5
pulverulent, water-dispersible, blocked polyisocyanate adduct
having particle diameters of from about 1 to 1000 microns or
perform a process for making such an adduct, as herein claimed.
Whether making and using the invention would have required
undue experimentation, and thus whether the disclosure is
enabling, is a legal conclusion based upon several underlying
factual inquiries. See In re Wands, 858 F.2d 731, 736-37,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Here, the examiner has not
presented sufficient factual determinations to support the legal
conclusion that undue experimentation is required to practice the
invention as claimed.
Nor has the examiner established that the subject matter
involved in this appeal is unpredictable, let alone to such an
extent that appellants need to provide working examples across
the breadth of the claimed subject matter, as seemingly suggested
by the sentence bridging pages 3 and 4 of the answer. In this
regard, we note that compliance with the enablement provision of
35 U.S.C. § 112, first paragraph does not require appellants to
actually have reduced the claimed invention to practice, let
alone demonstrate such a reduction to practice across the full
breadth of the scope of the claims.
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