Appeal No. 94-3351
Application 07/919,679
giving reasons, supported by the record as whole, why the
specification is not enabling....Showing that the disclosure
entails undue experimentation is part of the PTO’s initial
burden....? In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219
(CCPA 1976). In determining whether a disclosure would require
undue experimentation to make and use claimed subject matter, the
examiner must consider not only the breadth of the claims but
also other factors such as the predictability or unpredictability
of the art in question, the relative skill of those in the art,
the state of the prior art, the nature of the invention, the
presence or absence of working examples, the amount of direction
or guidance presented, and the quantity of experimentation
necessary. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988), citing with approval Ex parte Forman, 230 USPQ
546, 547 (Bd. Pat. App. & Int. 1986). The examiner has failed to
adequately address any of the above considerations.
In neither his statement of rejection, nor his response to
appellants’ arguments, has the examiner provided a single
persuasive reason as to why the specification fails to enable one
skilled in the art to disclose how to make and use the compounds
claimed ?in the generic scope?. Indeed, the examiner
acknowledges that the cited prior art shows that the activity
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