Appeal No. 1998-2089
Application 08/443,507
considered in determining whether a disclosure would require undue experimentation.
These factors are:
(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.
Here, claim 1 on appeal covers a large area in view of the recitation of variables
R, R1, R5, R6, and A. Claim 1 is broad in scope.2
Further, as stated in In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA
1970), “in cases involving unpredictable factors, such as most chemical reactions and
physiological activity, the scope of enablement obviously varies inversely with degree of
unpredictability of the factors involved.” Here, we agree with the examiner that
applicants’ claimed invention involves a relatively high degree of unpredictability. The
claims at issue are drawn to quinoxalinedione derivatives, said to be useful for treating
various neurodegenerative disorders by administering same to a mammal (including a
human patient) in need of such treatment. The claimed invention involves unpredictable
factors such as physiological activity, pharmacology, and therapeutic action of specified
quinoxalinedione derivatives.
Also, the very nature of applicants’ invention involves therapeutically active
ingredients for administration to a mammal, including a human patient, in need of
2 In their Appeal Brief, page 3, first paragraph, applicants group all of the appealed claims together.
Accordingly, for the purposes of this appeal, we have treated claim 3 through 7, 9 through 14, 17, 19, and
24 as standing or falling together with claim 1.
7
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