Ex parte REESE - Page 3




          Appeal No. 1999-1612                                                        
          Application 08/614,188                                                      


          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.  Id. at 737, 8 USPQ2d at 1404.  We have also noted                  
          that all of the factors need not be reviewed when determining               
          whether a disclosure is enabling.  See Amgen, Inc. v. Chugai                
          Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027                 
          (Fed. Cir. 1991) (noting that the Wands factors "are                        
          illustrative, not mandatory.  What is relevant depends on the               
          facts.").                                                                   
               Appellant traverses our findings that: (1) the                         
          specification is devoid of any working examples or guidance                 
          which would provide details needed for one of ordinary skill                
          in the art to practice an invention directed to the specific                
          feature claimed of transmitting caller identification                       
          information during a silent interval of a call waiting cycle                
          and (2) the state of the prior art is such that the skilled                 



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