Appeal No. 2001-0342 Page 9
Application No. 08/677,707
experimentation. The threshold step in resolving this issue
as set forth supra is to determine whether the examiner has
met his burden of proof by advancing acceptable reasoning
inconsistent with enablement.
In our opinion the examiner has not met his burden of
proof by advancing acceptable reasoning inconsistent with
enablement for the following reasons.
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).
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