Ex parte Landa

Board of Patent Appeals and Interferences

Jan 31, 2000

08203596 (B.P.A.I. Jan. 31, 2000)

Application for patent filed February 28, 1994. 1
According to appellant, this application is a continuation of
Application 07/676,422, filed March 28, 1991, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 48
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BENZION LANDA
__________
Appeal No. 1996-2362
Application 08/203,5961
__________
HEARD: Jan. 12, 2000
__________
Before KIMLIN, GARRIS, and PAK, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 6
through 8 and 11 through 13. The remaining claims in the
Appeal No. 1996-2362
Application No. 08/203,596
2
application, which are claims 9, 10, 14 and 15, have been
indicated by the examiner as either allowed or allowable.
The subject matter on appeal relates to a liquid toner
and to a process for the use thereof. The toner comprises a
polymer blend having certain characteristics associated with
temperature and viscosity. This appealed subject matter is
adequately illustrated by independent claim 6, a copy of which
taken from the supplemental appendix of the appellant’s reply
brief is appended to this decision.
No references are relied upon by the examiner in the
rejection set forth below which is the sole rejection
remaining on this appeal.
Claims 6 through 8 and 11 through 13 are rejected under
the first paragraph of 35 U.S.C. § 112 for being based upon an
original disclosure which would not enable one having an
ordinary level of skill in this art to practice the here
claimed invention.
We refer to the brief and reply brief and to the answer
and supplemental answer for a complete exposition of the
opposing viewpoints expressed by the appellant and the
examiner concerning the above noted rejection.
Appeal No. 1996-2362
Application No. 08/203,596
3
We will not sustain this rejection for the reasons fully
detailed by the appellant in the brief and reply brief. We
add the following comments for emphasis.
In support of his nonenablement position regarding the
here claimed polymers, the examiner argues that “[t]here is no
way of determining, without individually testing every single
one of these polymers, whether it would be suitable as a
liquid toner and whether it meets the limitations of
Appellant’s claim” (answer, page 8). However, even if this
argument is factually sound, it does not militate against
enablement. This is because the enablement criteria of
section 112 simply does not require the capability of
determining suitability in the absence of testing. As the
appellant has repeatedly explained, such a requirement would
render all “experimentation” “undue”, since “experimentation”
implies that the success of a particular activity is
uncertain. In re Angstadt, 537 F.2d 498, 503, 190 USPQ 214,
218-219 (CCPA 1976). Furthermore, it is well settled that
some experimentation is permissible under the enablement
requirement of section 112. Fields v. Conover, 443 F.2d 1386,
1390-1391, 170 USPQ 276, 279 (CCPA 1971).
Appeal No. 1996-2362
Application No. 08/203,596
4
In addition, contrary to the examiner’s view,
nonenablement is not established simply because there may be a
large “number of tests required to determine which polymer
blends meet the claimed limitations” (answer, page 9). Such a
number is not the criteria or test for assessing whether a
disclosure is nonenabling because the “experimentation”
required is “undue”. That is, “[t]he test is not merely
quantitative, since a considerable amount of experimentation
is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of
guidance with respect to the direction in which the
experimentation should proceed”. In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), citing Ex parte
Jackson, 217 USPQ 804, 807 (Bd. App. 1982).
In essence, it appears to be the examiner’s opinion that
the appellant should be limited to claims which encompass only
the specific blends of particular polymers disclosed in the
subject specification examples. However, a competitor could
avoid infringing such claims merely by following the
appellant’s disclosure to find a substitute polymer blend. In
order to provide effective incentives, claims must adequately
Appeal No. 1996-2362
Application No. 08/203,596
5
protect inventors. To demand that the first to disclose shall
limit his claims to the specific materials he has found will
work would not
serve the constitutional purpose of promoting progress in the
useful arts. In re Goffe, 542 F.2d 564, 567, 191 USPQ 429,
431 (CCPA 1976).
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Chung K. Pak )
Administrative Patent Judge )
tdl
Appeal No. 1996-2362
Application No. 08/203,596
6
GREENBLUM & BERNSTEIN, P.L.C.
1941 Roland Clarke Place
Reston, VA 20191
Appeal No. 1996-2362
Application No. 08/203,596
1
APPENDIX