Appeal No. 2001-1124
Application 08/885,468
disclosure in a specification is determined as of the date that
the patent application was first filed, see Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986). Our reviewing court has held that a patent
specification complies with the statute even if a “reasonable”
amount of routine experimentation is required in order to
practice a claimed invention, but that such experimentation must
not be “undue.” See, e.g., In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988) (“Enablement is not precluded
by the necessity for some experimentation . . . . However,
experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not
experimentation’.”) (footnotes, citations, and internal quotation
marks omitted). In Wands, the court sets forth a number of
factors which a court may consider in determining whether a
disclosure would require undue experimentation. These factors
were set forth as follows: (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
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