Appeal No. 1998-2010
Application No. 08/542,861
1993)). Further, in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988) the court stated that:
Factors to be considered 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.]
These factors are neither mandatory nor cumulative. Enzo Biochem Inc. v. Calgene Inc.,
188 F.2d 1362, 1371, 52 USPQ2d 1129, 1136 (Fed. Cir. 1999).
In the present case, the examiner has provided evidence that the nature of the
invention, and state of the prior art (Kayegama) is such that the relevant art is
unpredictable.1 In addition, the scope of the claims is very broad, encompassing a vast
number of compounds and varied substituents. The amount of guidance presented in the
specification as to compounds within the scope of the claims having the necessary
protease inhibitory activity is minimal. In particular, the examples in the specification
1 The Federal Circuit acknowledged in In re Wright, that “in February 1993, the
physiological activity of RNA viruses was sufficiently unpredictable....”. In re Wright, 999
F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
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