Appeal No. 1999-2193 Page 8
Application No. 08/975,338
Factors which must 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 those in the
art,
(7) the predictability or unpredictability of the art, and
(8) the breadth of the claims. See In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) citing Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
Our review of the record reveals that the examiner has
not applied the above-noted factors to determine that undue
experimentation would be required to practice the invention or
provided an explanation that clearly supports such a
determination. While both the examiner and the appellants
agree that Figures 2 and 3 are incorrect (answer, pp. 4-5;
brief, p. 4), this fact alone does not, in our view, warrant
an enablement rejection.
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