Appeal No. 1995-1162
Application 07/725,943
in the specification without undue experimentation.” Id. The court has further explained
that the
factors to be considered in determining whether a disclosure would require undue
experimentation have been summarized by the board in Ex parte Forman [230
USPQ 546, 547 (Bd. Pat. App. & Int 1986)]. They 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 [In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)].
On this record, we find the examiner’s initial rejection of all the claims under § 112, first
paragraph, to be tantamount to an assertion that one skilled in the art can not make and
use the claimed invention throughout its scope without undue experimentation. The mere
citing of a series of facts, without relating them to the criteria for determining undue
experimentation set forth in In re Wands, is not sufficient to establish a prima facie case
of nonenablement.
Moreover, nowhere in her two paragraph “Response to Arguments” [Answer, pp. 7-
8], does the examiner acknowledge (i) the appellants’ arguments as to what was known in
the art with respect to inducible promoter systems, and (ii) the references relied upon to
support those arguments. Thus, we find that the examiner has erred in failing to indicate
2
whether she entered and considered any of the references accompanying the brief and, if
2We note that two of the references; i.e., Exhibits E and F, are in German. The
appellants have failed to provide, and the examiner has not requested, certified
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