Appeal No. 1999-2225
Application No. 08/815,441
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). As long
as "undue experimentation" is not involved, a specification would
comply with the enablement requirement of the statute even if a
reasonable amount of routine experimentation is necessary to
practice the claimed invention. Enzo Biochem Inc. v. Calgene,
188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135 (Fed. Cir. 1999). Even
"a considerable amount of experimentation is permissible, if it
is merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed..." Wands, 858 F.2d at
737, 8 USPQ2d at 1404.
Here, the examiner has not undertaken the analytic
framework, as set out in Wands, for determining whether one
skilled in the relevant art would be subject to "undue
experimentation" in making and using the claimed invention. For
this reason alone, the examiner has failed to carry the initial
burden of proof.
The examiner fails to understand that a rejection under 35
U.S.C. § 112, first paragraph, must take into account various
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. In
re Wands, 858 F.2d 731, 735, 736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).
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