Appeal No. 1997-3242
Application 07/929,834
For a number of reasons discussed at length in the specification (e.g., pages 9, 10,
20, 23 and 46), “the primary basis for sequence discrimination in RNA is believed to be
the minor groove.” Specification, page 23.
DISCUSSION
Rejection I: Enablement
“The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the specification of
a patent enable any person skilled in the art to which it pertains to make and use the
claimed invention. Although the statute does not say so, enablement requires that the
specification teach those in the art to make and use the invention without ‘undue
experimentation.’ In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). That some experimentation may be required is not fatal; the issue is whether the
amount of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495, 20
USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis in original).
A number of factors are relevant to whether undue experimentation would be
required to practice the claimed invention, including “(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.” In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988).
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