Details: The Applicant's claims included “an adhesive whose total quantity of gas detected when analysis using gas chromatograph mass spectrometry is conducted under test conditions of 180 °C and 10 minutes is 100.5 μg/g or less in n-tetradecane.” The Examiner's enablement rejection alleged that the Applicant had not provided adequate information about the molecular structure of adhesive or enough comparative data for other adhesives under the claimed test conditions.
The Board reversed the enablement rejection. The Board found that the Examiner's concerns about molecular structure and comparative data were either addressed by the spec or could be determined without undue experimentation using spectrometry. The Board further noted "none of the Examiner’s above-noted questions and allegations addresses the Wands factors," which is the appropriate framework for enablement analysis.
Turning to the indefiniteness rejection, the rejection consisted of a general allegation "it is far from clear or certain what the scope or metes and bounds of the claimed invention are" followed by a series of question:
- what are the molecular weight distributions of the polymeric materials that can be used?
- what is the average molecular weight of the polymer which can be used?
- what is the sample size of the material that is used?
- what is the moisture content of the sample size?
- what actually is the Appellants’ definition of the term ‘adhesive’?
- what comprises n-tetra-decane?
- what are some of the specific adhesives (by common or IUPAC names) which would be excluded and why?
My two cents: Since the Board made a factual finding that the spec did enable the claims, the Board's comments about the deficiencies in the Examiner's rejection could be considered dicta. Even so, the next time I get a vague enablement rejection, I'll definitely consider traversing with a statement that the appropriate standard is a "reasonable explanation as to why the scope of protection provided by claims required undue experimentation." Similarly, if I get an indefiniteness rejection which is nothing more than a series of questions, I'll probably traverse by insisting that the Examiner apply the appropriate standard for indefiniteness.