Appeal No. 1999-0862
Application 08/764,275
invention, but that such experimentation must not be “undue.”
See, e.g., In re Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988) (“Enablement is not precluded by the
necessity for some experimentation . . . . However,
experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not
‘experimentation’.”) (footnotes, citations, and internal
quotation marks omitted). In Wands, we set forth a number of
factors which a court may consider in determining whether a
disclosure would require undue experimentation. These factors
were set forth as follows:
(1) the quantity of experimentation necessary, (2) the amount
of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of
those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims.
Id. at 737, 8 USPQ2d at 1404. We have also noted that
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007