Appeal No. 2001-0918 Page 4
Application No. 08/758,106
paragraph, a patent application must adequately disclose the claimed invention
so as to enable a person skilled in the art to practice the invention at the time the
application was filed without undue experimentation. Enzo, 188 F.3d at 1371-72,
52 USPQ2d at 1136. We note, however, that “nothing more than objective
enablement is required, and therefore it is irrelevant whether this teaching is
provided through broad terminology or illustrative examples.” In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). As set forth in In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993):
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.
To assist the fact finder in meeting her initial burden our appellate
reviewing court has outlined a number of factors that should be considered. As
set forth in In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400, 1402,
1404 (Fed. Cir. 1988), 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.
On this record, the examiner provides no analysis of the Wands factors.
In addition, the examiner does not rely on any factual evidence to support her
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