Appeal No. 1999-1612
Application 08/614,188
54 under 35 U.S.C. § 112, first paragraph, for failing to
provide an adequate written description and enabling
disclosure of the claimed invention. Appellant challenges our
affirmation of the rejection of claim 54 under 35 U.S.C. §
112.
As noted by our reviewing court in Enzo v. Calgene, 188
F.3d 1362, 1371, 52 USPQ2d 1129, 1135, we have held that a
patent specification complies with the statute even if a
"reasonable" amount of routine experimentation is required in
order to practice a claimed invention, but that such
experimentation must not be "undue." See, e.g., In re Wands,
858 F.2d 731, 736-37, 8 USPQ2d 1400, 1404 ("Enablement is not
precluded by the necessity for some experimentation . . . .
However, experimentation needed to practice the invention must
not be undue experimentation. The key word is 'undue,' not
'experimentation'.")(footnotes, citations, and internal
quotation marks omitted). In Wands, we set forth a number of
factors which a court may consider in determining whether a
disclosure would require undue experimentation. These factors
were set forth as follows: (1) the quantity of experimentation
2
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007