Ex parte KOSLEY JR. et al. - Page 11




          Appeal No. 1997-2188                                                        
          Application 08/137,440                                                      
          required undue experimentation, and thus, whether a disclosure              
          is enabling under 35 U.S.C.  112,  1 (1994), is a legal                   
          conclusion based upon underlying factual inquiries."  Johns                 
          Hopkins University v. CellPro Inc., 152 F.3d 1342, 1354, 47                 
          USPQ2d 1705, 1713 (Fed. Cir. 1998).  Nevertheless, there must               
          be a reasonable correlation between the scope of what is                    
          claimed and the scope of enablement provided by appellants'                 
          specification to the person of ordinary skill in the art.  In               
          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                       
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