Appeal No. 2001-1739
Application 08/892,903
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 unpredictability of the art, and (8) the
breadth of the claims. Id. at 737, 8 USPQ2d at 1404. We have
also noted that all of the factors need not be reviewed when
determining whether a disclosure is enabling. See, Amgen, Inc.
v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016,
1027 (Fed. Cir. 1991) (noting that the Wands factors “are
illustrative, not mandatory. What is relevant depends on the
facts.”).
We note for the record that the language found in claims 5
and 6 in contention before us was the original claim language
filed in the application. Thus, the claim language itself must
be considered as part of the original enabling disclosure.
Furthermore, we also note that the Appellant has provided us with
a working example of how to modify beam 14. In particular,
structure 10 shows a way in which beam 14 would be able to be
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