Appeal No. 1999-1355 Page 4
Application No. 08/469,786
on its face. That being said, for reasons which follow, we find that the rejection is
without merit for the broader claims as well.
“When rejecting a claim under the enablement requirement of section 112, the
PTO bears an initial burden of setting forth a reasonable explanation as to why it
believes that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification of the application.” In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). “[T]o be
enabling, the specification of a patent must teach those skilled in the art how to make
and use the full scope of the claimed invention without ‘undue experimentation’” Id. at
1561, 27 USPQ2d at 1513. “That some experimentation may be required is not fatal;
the issue is whether the amount of experimentation is ‘undue.’” In re Vaeck, 947 F.2d
488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis in original).
“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). Among these considerations are the so-called Wands factors, including “(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.” Id.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007