Appeal No. 2002-0377 Page 6
Application No. 09/123,908
experimentation 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. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
Our review of the record reveals that the examiner has not applied the above-
noted factors to determine that undue experimentation would be required to practice the
invention or provided an explanation that clearly supports such a determination. Since
the examiner has not weighed the factors, the examiner's conclusion of nonenablement
cannot be sustained.
Furthermore, we agree with the appellants' view (brief, pp. 28-32) that a person
skilled in the art would know how to make and use the invention as set forth in claims 1
to 25 under appeal based on the functional description set forth in the application.
While the appellants have not set forth structurally how all the functions are
accomplished, such is not required unless the examiner can establish by use of the
above-noted factors that one skilled in the art could not make and use the claimed
invention from the disclosure coupled with information known in the art without undue
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