Appeal No. 2006-1330
Application No. 10/212,927
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In
the present case, we agree with appellants that one of ordinary
skill in the art would reasonably interpret the claim language as
encompassing compounds that are derivatives of the basic thiazole
structure that is well known in the art. It must be borne in
mind that the breadth of a claim is not synonymous with
indefiniteness, and the examiner’s concern about whether all
thiazole derivatives would be effective in appellants’
formulations speaks to the enablement requirement of Section 112,
first paragraph. The examiner has not made out a prima facie
case that one of ordinary skill would be unable to practice the
breadth of the claimed invention. Nor has the examiner made out
the prima facie case that the appealed claims embrace a
considerable number of inoperative thiazole derivatives. We
point out, however, that it is not the function of the claims to
specifically exclude possible inoperative embodiments. In re
Dinh-Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974).
We now turn to the examiner’s Section 102 rejection of the
appealed claims. The singular argument advanced by appellants is
that the asphalt/polymer composition of Guo includes a
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