Appeal No. 1997-0529 Page 12
Application No. 08/573,884
Factors to be considered in determining whether a
disclosure would require undue experimentation 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. See In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) citing Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
In this case, the examiner has focused only on one of the
above-noted eight factors (i.e., working examples) as the
basis that led the examiner to conclude that the scope of any
enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the
claims. Since the examiner has not weighed all the factors,
the examiner's conclusion of nonenablement cannot be
sustained. As stated in the Manual of Patent Examining
Procedure (MPEP) § 2164.02 (Seventh Edition, Rev. 1, Feb.
2000)
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007