Appeal No. 1999-1430
Application No. 08/441,893
set forth in Wands, the factors to be considered in determining whether a
claimed invention is enabled throughout its scope without undue experimentation
include the quantity of experimentation necessary, the amount of direction or
guidance presented, the presence or absence of working examples, the nature
of the invention, the state of the prior art, the relative skill of those in the art, the
predictability or unpredictability of the art, and the breadth of the claims.
We note that in response to appellants’ arguments, the examiner attempts
(Answer, pages 8-11) to “shoehorn” his unsupported conclusions into a Wands
analysis. However, in the absence of a factual basis to support the examiner’s
conclusions, the examiner has not sustained his initial burden of establishing a
prima facie case of non-enablement. In this regard, we recommend that the
examiner review Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
52 USPQ2d 1129 (Fed. Cir. 1999). Therein, the court provided a model analysis
of enablement issues and illustrated the type of fact finding which is needed
before one is in a proper position to determine whether a given claim is enabled
or non-enabled.
The examiner appears to be unduly concerned that the claims include
inoperative species. As set forth in Atlas Powder Co. v. E.I. DuPont De Nemours
& Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative,
the claims are not necessarily invalid. “It is not a function of
the claims to specifically exclude ... possible inoperative
substances ....” In re Dinh-Nguyen, 492 F.2d 856, 859-59,
181 USPQ 46, 48 (CCPA 1974)(emphasis omitted). Accord,
In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793
(CCPA 1974); In re Anderson, 471 F.2d 1237, 1242, 176
USPQ 331, 334-35 (CCPA 1971). Of course, if the number
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