Appeal No. 1997-2167
Application 08/137,444
re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir.
1991); In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA
1970).
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 the
routineer in the art, (7) the predictability or lack thereof
in the art, and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The examiner's position as stated in his Answer is that
he considers appellants' claims to be directed to the
treatment of Alzheimer's disease, the only disease mentioned
in their specification as including as a symptom thereof
memory loss due to decreased cholinergic function. The
examiner explains that appellants have failed to present
adequately reliable information
in their disclosure for effectively treating Alzheimer's
disease. Specifically, the examiner questions the reliability
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