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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