Appeal No. 1997-3275
Application No. 07/963,329
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.
On the record before us, the examiner has failed to provide the factual evidence or
reasoning which would reasonably support a conclusion that the present disclosure in
support of the claimed invention was not enabling through out the scope of the claimed
subject matter. Even if we assume, for purposes of argument, that the area of endeavor is
highly unpredictable, the examiner's speculation concerning dosages, routes of
administration, and effectiveness are not supported by evidence which would reasonably
establish that one skilled in this art could not practice the invention, given the disclosure
provided by the specification, without undue experimentation. More is required than
merely providing alternative explanations for the results described and direction provided
by the specification. The examiner must establish that one skilled in this art would not
accept the disclosure as enabling for the claimed invention.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007