Appeal No. 1999-1245
Application No. 08/245,282
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). The threshold step in resolving this
issue is to determine whether the examiner has met his burden of proof by advancing
acceptable reasoning inconsistent with enablement.
Factors to be considered by the examiner in determining whether a disclosure
would require undue experimentation have been summarized by the board in Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986). They include (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. In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). We note that all of the factors need
not be reviewed when determining whether a disclosure is enabling. Amgen, Inc. v.
Chugai Pharm. Co., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed. Cir. 1991)
(noting that the Wands factors "are illustrative, not mandatory. What is relevant
depends on the facts.").
In this regard, the following passage from PPG Indus. Inc. v. Guardian Indus.
Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996) is instructive here.
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of only
one or a few embodiments and do not demonstrate with reasonable
specificity how to make and use other potential embodiments across the
full scope of the claim. See, e.g., In re Goodman, 11 F.3d 1046, 1050-52,
29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v. Chugai
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