Ex parte REINHARDT et al. - Page 9




          Appeal No. 2000-0210                                       Page 9           
          Application No. 08/893,906                                                  


               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.      Since the examiner has not weighed the                  
          factors, the examiner's conclusion of nonenablement cannot be               
          sustained.                                                                  










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