Appeal 2006-2729
Application 10/193,363
functional material and the surfactant, respectively, even though extended
cogitation may be necessary for one skilled in this art to comprehend the
entire scope of the materials encompassed by these terms. See, e.g., In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (“Breadth is
not indefiniteness.”).
Accordingly, in the absence of a prima facie case of indefiniteness, we
reverse the ground of rejection of the appealed claims under 35 U.S.C. §
112, second paragraph.
We further agree with Appellants that the Examiner has not
established that, prima facie, the information, including described prior art
and illustrative embodiments, disclosed in the Specification combined with
the knowledge one skilled in this art would employ to consider that
information would not have enabled this person to practice the claimed
invention without undue experimentation. In order to establish a prima facie
case of non-enablement under § 112, first paragraph, the examiner has the
burden of providing a reasonable explanation, supported by the record as a
whole, why the assertions as to the scope of objective enablement set forth
in the specification are in doubt, including reasons why the description of the
invention in the specification would not have enabled one of ordinary skill in
this art to practice the claimed invention without undue experimentation.
See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988); In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70
(CCPA 1971).
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