Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 controlled by In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995).
2 Id. at 7.
3
4 Examiner's observation on candidate testing
5 The Examiner had the following observation on Appellants'
6 "every candidate needs a test" argument [Examiner's Answer, page 5
7 (Appeal 2006-2747)]:
8 Applicants' argument that every candidate for
9 evaluation in the art would require separate testing
10 before drawing any conclusions is rebutted by the
11 broad scope of materials disclosed and claimed in
12 each of the prior art references of record. Further,
13 the argument suggests that the instant
14 specification, which does not include testing and
15 evaluation of each species implicitly or explicitly
16 claimed, is insufficient [under the enablement
17 requirement of first paragraph of 35 U.S.C. § 112]
18 to support claims having the breadth of scope of
19 instant claims 28-32.
20
21 We understand the Examiner to say that if the Examiner erred in
22 making a § 103 rejection, then the claims are not patentable under the
23 enablement requirement of the first paragraph of 35 U.S.C. § 112. In other
24 words, Appellants cannot have it both ways by presenting broad claims
25 while at the same time maintaining that one skilled in the art would not
26 expect, absent tests, the prior art to be effective.
27
28 Gordon '252
29 Gordon '252 is a patent cited in Appellants' specification and
30 manifestly is part of "the prior art . . . of record" mentioned by the Examiner.
31 Col. 2, lines 15-27.
22
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