Appeal No. 2007-0301
Application No. 10/277,435
The examiner argues the disclosure states that there are a number of
different hindered amine light stabilizers (HALS) that are similar in
chemistry, but that the disclosure fails “to exemplify other suitable
stabilizers or disclose the characteristics that a suitable hindered amine light
stabilizer must possess in order to satisfy the objectives of the invention.”
Id. According to the examiner, “appellant’s statement regarding similarities
in terms of chemistry and function, when considered in light of the
aforementioned stated differences, is vague and ambiguous to the point that
one cannot derive specific or definitive guidance from the language;
accordingly one cannot reasonably conclude from the disclosure that all
hindered amine light stabilizers will function equivalently for the given
specific application.” Id. at 3-4.
The examiner bears the initial burden of showing nonenablement. See
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993). “[E]nablement requires that the specification teach those in the art to
make and use the invention without ‘undue experimentation.’ . . . That some
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495,
20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis in original). Some
experimentation, even a considerable amount, is not “undue” if, e.g., it is
merely routine, or if the specification provides a reasonable amount of
guidance as to the direction in which the experimentation should proceed.
See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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