Commissioner Decision 1315

The Patent Appeal Board (PAB) was considering a patent application in which the Final Action indicated that the specification does not provide a factual basis for a person skilled in the art to soundly predict that the desired result would be obtained if a polymer different to the one set out in the specification was used. Further, the Final Action stated that the specification does not enable the person skilled in the art to make suitable polymers.

The PAB noted that the issues of sound prediction and insufficiency of disclosure are separate. The PAB first considered the issue of sound prediction and found that the line of reasoning is reasonable in light of the factual basis, and have both been sufficiently disclosed in the specification. The PAB further found that there is sufficient information in the specification such that a person skilled in the art would not be required to perform inventive or undue experiment to find additional polymers that would fall within the claims.