Appeal 2007-4234
Application 10/929,891
diluent or type of diluent. Thus, it appears to us that claim 1 simply requires
a surfactant which, for example, liquifies the wax, i.e., which reduces its
surface tension sufficient to make it readily dispersible in a diluent, to satisfy
step (a) of chemically treating the crystalline wax. The specification
describes surfactants which are "good emulsifying and dispersing agents for
oils and solids" (FF 12) as well as fluorocarbon alcohols said to enhance the
action of a surfactant by further lowering the surface tension of the oil or
solid (FF 13). The specification further describes plasticizers said to
enhance the rate of conversion of crystalline wax to amorphous wax (FF 15).
The specification still further describes hydrotrope-demulsifiers and
chelating agents said to increase the solubility of the wax in a hydrocarbon
(FF 16) (see e.g., claim 4 wherein the diluent is a hydrocarbon). Nothing
more than objective enablement is required. It is irrelevant whether this
teaching is provided through broad terminology or illustrative examples.
Marzocchi, 439 F.2d at 223, 169 USPQ at 369.
Here, the Examiner has not explained why one skilled in the art,
reading the disclosure of Appellant's specification plus the scope of what
would have been known to the skilled artisan, would have required undue
experimentation to make and use the methods of claims 1-19. The
Examiner's finding that the specification only described one specific
chemical dispersant (FF 21) is not a sufficient reason for doubting the scope
of enablement provided by the specification. It is well established that even
a broad claim can be enabled by disclosure of a single embodiment.
Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ2d 1737
(Fed. Cir. 1987). Since the Examiner has not met his initial burden of
setting forth a reasonable explanation as to why he believes that the scope of
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