Appeal No. 1998-2841
Application No. 08/463,282
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). The factors to be considered in determining whether a disclosure would require
undue experimentation 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.
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
3
The statement of the rejection is thus plainly deficient. In our view, other factors --
not addressed in the rejection -- which are relevant to the enablement analysis outweigh
any facts relied upon by the examiner.
As a general consideration, the level of predictability in the mechanical and
electrical arts is recognized as being relatively high. See, e.g., In re Hogan, 559 F.2d 595,
606, 194 USPQ 527, 537-38 (CCPA 1977) (taking notice of the high level of predictability
in mechanical or electrical environments and the lower level of predictability expected in
chemical reactions and physiological activity).
3We note that, consistent with the law of our reviewing court, Office policy is to consider all the
relevant factors when making a rejection for lack of enablement. “The examiner’s analysis must consider
all the evidence related to each of these [In re Wands] factors, and any conclusion of nonenablement must
be based on the evidence as a whole.” Manual of Patent Examining Procedure § 2164.01(a), Seventh
Edition, Rev. 1 (Feb. 2000).
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