Appeal No. 1999-2406
Application No. 08/825,256
Accordingly, we cannot uphold the examiner's rejection
under 35 U.S.C. § 112, first paragraph, of claims 1 through 4,
10, 11, 20, and 21 as violating the written description
requirement.
Concerning the rejection under 35 U.S.C. § 112, first
paragraph, of all the appealed claims as failing to comply with
the enablement requirement, we agree with the appellants (appeal
brief, pages 12-13; reply brief, pages 2-5) that one skilled in
the relevant art would not be subject to any undue
experimentation to make and/or use the claimed invention.2 Here,
the specification contains explicit direction or guidance on how
"to minimize the effects of surface tension" or "to cancel out
surface tension of the solution." (E.g., page 5, lines 19-24;
page 7, line 10 to page 11, line 23.) This direction or
guidance is accompanied by actual working examples and drawings
to further enlighten one skilled in the relevant art.
2 The question of whether making and using the invention
would have required "undue experimentation" depends on several
underlying factual inquiries including: (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, 735, 736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).
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