Appeal No. 1998-1283
Application No. 08/449,731
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.
On the record before us, we find that the examiner’s reasoning has its own internal
logic. However, we find that the examiner's statements, in support of this rejection, fall short
of the requirement set forth above and fail to provide adequate evidence or reasons why one
skilled in the art would doubt the statements and direction presented in the disclosure in
support of the claimed invention. The examiner's conclusory statements relating to the
Wands factors are not supported by facts or evidence which would provide a reasonable
basis for the conclusions reached. We point out that the guidance provided by the
specification is merely one of the factors which must be considered in determining whether
the disclosure provided by applicants in support of a claimed invention is sufficient to permit
those skilled in the art to which the invention relates to practice the invention without undue
experimentation. That some experimentation may be necessary, does not equate to undue
experimentation.
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