Appeal No. 1997-2338
Application No. 08/173,376
enablement. Only when the PTO meets this burden, does the burden shift to applicant to
provide suitable evidence indicating that the specification is enabling in a manner
commensurate in scope with the protection sought by the claims. In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971).
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
We point out that the guidance provided by the specification is merely one of the
factors considered in determining whether the disclosure provided by applicant in support of a
claimed invention is sufficient to permit those skilled in the art to which the invention relates to
practice the invention without undue experimentation. That some experimentation may be
necessary, does not equate to undue experimentation. Further, it is well settled that patent
applicant is not required to disclose every species encompassed by their claims, even in an
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