Appeal No. 1995-2789
Application No. 07/788,114
invention as it is claimed.” This however, is merely a conclusion, not a fact-
based reasoned analysis of the claimed invention in view of appellants’
supporting disclosure.
As set forth in In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400,
1402, 1404 (Fed. Cir. 1988) the factors to be considered in determining whether
a claimed invention is enabled throughout its scope without undue
experimentation include the quantity of experimentation necessary, the amount
of direction or guidance presented, the presence or absence of working
examples, the nature of the invention, the state of the prior art, the relative skill of
those in the art, the predictability or unpredictability of the art, and the breadth of
the claims. We find no analysis of the Wands factors by the examiner. Instead,
we find only the examiner’s unsupported conclusion that the specification does
not enable the claimed invention.
Similarly, the examiner argues (Answer, page 7) “it is questioned whether
one can even predictably isolate viable mutants of E. coli and B. subtilis which
are insensitive to feedback inhibition by threonine. … Thus, it would require
undue experimentation for the ordinary skilled artisan to either make or use the
claimed invention for E. coli and B. subtilis.” The examiner, however, fails again
to provide a factual basis upon which to question the predictability of appellants’
claimed invention.
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