Appeal No. 2006-1759 Παγε 8
Application No. 09/984,184
the filing date of the application, would have found that
appellants were not in possession of the subject matter of claim
44 based on the breadth thereof and mere allegations of
inadequate exemplification.2
We note that the examiner has not presented a rejection
based on a lack of enablement, much less made the case for such
an enablement rejection based on the mere allegation of “an
invitation to experiment...” in responding to arguments at page 5
of the answer. Indeed, the examiner’s rejection of claim 44, as
presented herein, could be viewed as somewhat inconsistent with
the examiner’s apparent holding that the same specification
passes muster under § 112, first paragraph and conveys possession
of the broader claim 33, from which claim 44 depends.
2 Not withstanding our disposition of this rejection, we recognize the examiner’s
effort and attention to detail in attempting to shoulder the burden of addressing the
manifold categories of polymers presented in appellants’ dependent claim 44, especially
given the plethora of named potential ingredients (including categories thereof) for the
claimed composition that is part of the subject matter on appeal. See the 69 claims
pending in this application and appellants’ specification.
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