Appeal No. 1997-2937
Application No. 08/420,562
enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’” In re
Wright, supra. Whether making and using the invention would
have required undue experimentation, and thus whether the
disclosure is enabling, is a legal conclusion based upon
several underlying factual inquiries. See In re Wright,
supra; In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400,
1402, 1404 (Fed. Cir. 1988). Here the examiner has only made
the underlying factual finding that the art in question is
unpredictable. The examiner has failed to make the other
underlying factual inquiries suggested by In re Wands, 858
F.2d at 736-37, 8 USPQ2d at 1404.
Furthermore, the examiner has failed to show that any
experimentation necessary to practice the invention as claimed
would be “undue” and not routine, i.e., would “require
ingenuity beyond that to be expected of one of ordinary skill
in the art.” See In re Angstadt, 537 F.2d at 503-04, 190 USPQ
at 218-19. Even in an unpredictable art, Section 112 does not
require disclosure of a test with every species covered by a
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