Appeal No. 1999-1280
Application No. 08/379,813
Whether making or using the invention would have required undue
experimentation, and thus whether the disclosure is enabling, is a legal conclusion
based on several underlying factual inquiries. See In re Wands, 858 F.2d 731, 735,
736-37, 8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988). As set forth in Wands, the
factors to be considered in determining whether a claimed invention is enabled
throughout its scope without undue experimentation include the quantity of
experimentation necessary, the amount of direction or guidance presented, the
presence or absence of working examples, the nature of the invention, the state of the
prior art, the relative skill of those in the art, the predictability or unpredictability of the
art, and the breadth of the claims.
We find no Wands analysis in this record. Instead, we find only the examiner’s
unsupported conclusions as to why the specification does not enable the claimed
invention. In the absence of a fact-based statement of a rejection based upon the
relevant legal standards, the examiner has not sustained his initial burden8 of
establishing a prima facie case of non-enablement.
Furthermore, to the extent that the examiner is concerned with the scope of the
examples set forth in appellants’ specification, we note that examples are not required
to satisfy section 112, first paragraph. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982).
8 It is well settled that the examiner bears the initial burden of providing reasons why a
supporting disclosure does not enable a claim. In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971).
6
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