Appeal No. 1997-2204
Application No. 08/440,989
invention without 'undue experimentation.' " Genentech, Inc. v. Novo Nordisk, A/S, 108
F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997) (quoting In re Wright, 999
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)). Further guidance on this
issue is provided in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed. Cir.
1988), stating that:
Factors to be considered in determining whether a disclosure would require
undue experimentation have been summarized by the board in Ex parte
Forman, [230 USPQ 546, 547 (Bd. Pat. App. Int. 1986)]. They 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. (footnote omitted).
The Wands factors are illustrative, not mandatory. All of the factors need not be reviewed
when determining whether a disclosure is enabling. Enzo Biochem Inc. v. Calgene Inc.,
188 F.3d 1362, 1371, 52 USPQ2d 1129, 1136 (Fed. Cir. 1999). They provide the
decision-maker with guidance in resolving the question of enablement under 35 U.S.C. §
112, first paragraph.
On consideration of the record, we will not sustain this rejection for the reasons
succinctly set forth on pages 10 through 14 of the appeal brief. In our judgment, the
examiner has not provided adequate reasons to doubt the objective truth of statements
made in appellant's specification. The examiner’s arguments are insufficient to establish
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