Appeal No. 95-4692
Application 08/141,316
for finding that the specification fails to provide an
enabling disclosure with respect to the claimed enzymes. In
so doing, the examiner should bear in mind the appropriate
legal standard discussed above. See In re Marzocchi, supra.
Also, the test for enablement is whether one skilled in the
art could make or use the claimed method from the teachings in
the specification, coupled with information from the art,
without undue experimentation. Undue experimentation is not
determined by a single factual inquiry, rather, it is a
finding which is made after weighing several factors. See In
re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988) (“Factors to be considered in determining whether a
disclosure would require undue experimentation . . . include
(1) the quantity of experimentation necessary, (2) the amount
and 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”).
As for the case before us, we acknowledge that the
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