Appeal No. 1997-2336
Application No. 08/256,065
Factors appropriate for determining whether undue experimentation is required to
practice the claimed invention throughout its full scope are listed in In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors 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.
The examiner's rejection and the reasoning presented in support thereof focus on
these factors. At pages 2 and 3 of the Answer, the examiner begins her analysis by
interpreting the claims to encompass the use of the transdermal acetylsalicylic acid system
for the prevention of cancers generally. The examiner urges that the prevention of cancer in
general is a field of endeavor which remains unpredictable. The appellants argue that the
examiner has failed to provide prior art documentation to justify the statement that the art
area of cancer therapy remains highly unpredictable. However, the examiner's reasoning
appears sound (Answer, paragraph bridging pages 2-3) and appellants have offered no
meaningful evidence which would indicate that at the time of the filing of this application,
the field of endeavor relating to the prevention of cancer, as compared to the treatment of
patients with cancer, was not unpredictable. In such situations, it is not necessary to
provide extrinsic evidence to establish the relevant factor. See Enzo Biochem. Inc. v.
Calgene Inc., 188 F.3d 1362, 1371-72,
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