Appeal No. 1997-2528
Application No. 07/810,908
enablement issue and utility issue solely in light of that portion of the supporting
specification which describes appellants’ invention, not in light of the prior art. It is well
established that enablement issues must be decided on the basis of the information
imparted by appellants in the specification of the patent application under review in
conjunction with the relevant prior art. Viewing a given patent specification in a vacuum
apart from the prior art to determine whether the claims of such a patent application are
enabled is incorrect. See, e.g., Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361,
1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997), (“A specification need not disclose what
is well known in the art.”)
Factors to be considered by the examiner 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). In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The examiner has provided no analysis of the factors indicated above and has
provided no evidence on which to base the lack of enablement rejection. It is
incumbent upon the Patent Office, whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any statement in a supporting disclosure
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