Appeal 2006-2729
Application 10/193,363
thus explicitly sets forth the requirement that encompassed functional
material and surfactants have the claimed relative properties, “i.e., the
functional material is substantially insoluble in the compressed CO2 in the
absence of the surfactant, and the surfactant comprises a compressed CO2-
philic portion and a functional material-philic portion” (id.).
The Examiner responds “[i]t is unclear what combination of
functional materials and surfactants form aggregates . . . and how one skilled
in the art would specifically selected said combination” (Answer 16).
Appellants reply they addressed the Examiner’s enablement concerns with
respect to that ground of rejection (Reply Br. 8).
With respect to the rejection of independent claim 1 under § 112, first
paragraph, enablement requirement, the Examiner finds the Specification
enabling for specific nanoparticulate materials exemplified therein, but does
not reasonably provide enablement for all functional material including
guidance for generically specified functional materials such as the group of
such materials set forth in claim 10 (Answer 3-5). The Examiner concludes
“[t]he formation of particles having 0.5 to 10 nm particle size is material
specific and appellants’ claimed breadth would require undo
experimentation for all materials broadly listed in the specification and claim
10 to form said nanoparticles” (id. 3 and 5-6).
Appellants contend the Examiner has not carried the burden of
establishing that the disclosure in the Specification does not enable the
claims in compliance with § 112, first paragraph, enablement requirement
(Br. 9). Appellants contend the Specification provides general guidance and
specific examples which one skilled in the art with basic knowledge of the
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