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taught the ratios of vectors containing DNA sequences encoding
TSH" and $ subunits which would result in the production of
biologically active TSH” (Examiner’s Answer, pages 4 and 5).
As explained in 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 have been summarized by the board in Ex parte Forman, [230 USPQ
546, 547 (BdPatAppInt 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. (footnote omitted).
Here, the fact finding needed to support the examiners
assertion of undue experimentation has not been done.
Accordingly, the rejection of claims 7, 13, 15 through
22, 24, 28, 36, 81, 82, 89, 90, 92 and 93 under 35 U.S.C. §
112, first paragraph is reversed.
OTHER ISSUES
We note the issuance of U.S. Patent 5,639,639 to
appellants. Patented claim 10 appears to be so similar to the
present claims as to raise the issue of obviousness-type
double patenting. It is suggested that the examiner and
appellants review the patent upon return of the application to
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