Interference No. 102,700
consideration of appropriate factors relevant in determining
whether undue experimentation would be involved in practicing
the full scope of the claimed invention. These factors
include, inter alia, the scope of the working examples, the
breadth of the claims, the nature of the invention, the state
of the prior art, and predictability or unpredictability of
the art, as enumerated in In re Wands, 858 F.2d 731, 737, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988) and Ex parte Forman, 230
USPQ 546, 547 (BPAI 1986). Thus, the finding in the Decision
on Motions that Gilligan's generic product claims are not
enabled stands undisputed in this case. This undisputed
finding, and not any admission on the part of Gilligan, was
deemed to be a significant factor in our conclusions regarding
the patentability of Gilligan's generic method claims 76-79,
81-84 and 86-92.
Gilligan also charges us with misapprehending the
significance of statements made by party Gilligan during
prosecution of its parent application 06/655,366 in an
amendment filed on June 6, 1986 (OR 220-235). In relevant
part, Gilligan made the following statements in that
amendment:
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007