Appeal No. 2001-0378 Page 12
Application No. 08/873,876
Factors to 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).
In this case, the examiner has focused only on one of the
above-noted eight factors (i.e., working examples) as the
basis that led the examiner to conclude that the scope of any
enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the
claims. Since the examiner has not weighed all the factors,
the examiner's conclusion of nonenablement cannot be
sustained. As stated in the Manual of Patent Examining
Procedure (MPEP) § 2164.02 (Seventh Edition, Rev. 1, Feb. 2000)
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