Ex parte ARUFFO et al. - Page 11




          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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