Appeal No. 94-3255
Application 07/673,264
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). Our appellate reviewing court set
forth numerous factors which are to be considered in
determining whether a disclosure would require undue
experimentation in In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). These factors “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.” Id. In the event of
future prosecution,
the examiner should consider whether the specification
provides an enabling disclosure of the claimed invention in
view of these factors.
As to the case before us, it is recognized that there may
be simple assays available by which those skilled in the art
would have been able to determine the amount of amino acid
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