Appeal No. 1997-2338
Application No. 08/173,376
The Patent and Trademark Office (PTO) bears the initial burden of providing
reasons for doubting the objective truth of the statements made by applicant as to the
scope of enablement. Only when the PTO meets this burden, does the burden shift to
applicant to provide suitable evidence indicating that the specification is enabling in a
manner commensurate in scope with the protection sought by the claims. In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Factors appropriate for determining whether undue experimentation is required to
practice the claimed invention throughout its full scope are listed in In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors 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
A conclusion of lack of enablement means that, based on the evidence regarding
the above factors, the specification, at the time the application was filed, would not have
taught one skilled in the art how to make and/or use the full scope of the claimed invention
without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510,
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