Ex parte OHTA

Board of Patent Appeals and Interferences

Oct 27, 1999

08312036 (B.P.A.I. Oct. 27, 1999)

Application for patent filed September 26, 1994.1
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journal and (2) is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCE
_____________
Ex parte TETSUZI OHTA

_____________
Appeal No. 1997-1449
Application 08/312,0361
______________
ON BRIEF
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
LEE, and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Appeal No. 97-1449
Application 08/312,036
- 2 -
Upon consideration of the appellant's APPEAL BRIEF
(Paper 19) and the EXAMINER'S ANSWER (Paper 20), there being
no reply brief, it is
ORDERED that the decision of the examiner rejecting
claims 11 and 13-18 is reversed.
The examiner believes that disclosure of four species is
not an enabling disclosure commensurate in scope with the
breadth of the claims. In essence, the examiner--without
saying so in so many words--is concerned that undue
experimentation would be necessary to determine suitable
monomers which could be used in the claimed recording
material. The difficulty with the examiner's position is that
it is not supported by the evidence. Compare Ex parte Forman,
230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986) (discussion of
factors to be considered in determining whether undue
experimentation would be necessary to justify broad claim),
which was approved by the Federal Circuit in In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), and see
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971).
REVERSED
Appeal No. 97-1449
Application 08/312,036
- 3 -
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 97-1449
Application 08/312,036
- 4 -
cc (via First Class Mail)
LORUSSO & LOUD
3137 Mt. Vernon Avenue
Alexandria, VA 22305