Appeal No. 2001-2671 Page 8
Application No. 09/258,155
In applying the above-noted test for enablement, factors
which must 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. See In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) citing Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
Our review of the record reveals that the examiner has
not applied the above-noted factors to determine that undue
experimentation would be required to practice the invention or
6(...continued)
it is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it doubts
the truth or accuracy of any statement in a supporting
disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent
with the contested statement. Otherwise, there would be
no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate
disclosure.
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