Appeal No. 94-1696
Application 07/811,129
application is granted there is no reason to read into the claims
limitations from the specification). Thus, in view of the prior
art of record, we do not find that those skilled in the art would
have interpreted the appellants’ claims as being limited to ICAM-
2 fusion proteins as stated by the examiner, or even to ICAM-1
fusion proteins but, rather, such persons would find the scope of
the claims to be indeterminable, since they read on a fusion
protein comprising any molecule capable of binding to the LFA-1
receptor.
With that in mind, we point out that 35 U.S.C. § 112, first
paragraph requires that the specification must teach those
skilled in the art how to make and use the full scope of the
claimed invention without undue experimentation. In re Wright
999 F.2d 1557, 1561, 27 USPQ 1510, 1513 (Fed. Cir. 1993); In re
Vaeck, 947 F.2d 488, 495-96, 20 USPQ2d 1438, 1444-45 (Fed. Cir.
1991). The factors to be considered in assessing undue
experimentation were set forth in In re Wands, 858 F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These 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.
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