Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 14
In unpredictable arts, identification of the problem to be overcome may be a key to the
solution, even though implementing the solution only requires routine skill. Once the problem
with bacterial toxicity was deduced, several solutions may have immediately became plausible,
but prior to that deduction, such solutions would have been just a few of a vast range of possible
solutions to the unknown problem. At the time of filing, the 609 specification was inoperative as
disclosed. A specification must provide more than an invitation to experiment. Enzo Biochem,
at 1374, 52 USPQ2d at 1138. A considerable amount of experimentation is permissible, if it is
merely routine, or if the specification provides a reasonable amount of guidance about how the
experimentation should proceed in order to achieve the embodiment. PPG Indus. Inc. v.
Guardian Indus. Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996); cf.
Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed.
Cir. 1994) (a research plan does not amount to conception). In the present case, the further
efforts of the Tsui inventors (which were sufficiently important to merit publication in selective
journals) and the lack of any recognition of the problem, much less guidance toward its solution,
lead us to conclude that the experimentation necessary to render the Tsui 609 specification
disclosure operable for the subject matter of the 933 vector count was more than simply routine.
If we again consider the 609 disclosure as a reference under § 102(g) against the 933
vector count, it fails the Adams test as a reference for lack of operability. If we turn, as Dr. Ray
suggests, to other references to fill in the details, we are faced with a lack of motivation in the
609 disclosure to make the choices necessary to produce a solution. In essence, Dr. Ray invites
us to apply with hindsight Tsui's post-filing appreciation of the problem and ability to find a
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