Appeal No. 2002-0098
Application No. 09/064,290
Moreover, the examiner cites no authority for the position with regard to
enablement of unclaimed “advantages.” The examiner appears to retreat somewhat in
the Answer’s arguments responsive to the Brief, by focusing on an asserted lack of
concrete teachings in the specification or drawings for carrying out the claimed
invention. (Answer at 9-12.)
“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). The factors to be considered in determining whether a disclosure would require
undue experimentation include:
(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.
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
The alleged absence of specific embodiments illustrating the invention is thus
but one of the factors to be considered in whether undue experimentation may be
required. In regard to another relevant consideration, we note that the level of
predictability in the mechanical and electrical arts is recognized as being relatively high.
See, e.g., In re Hogan, 559 F.2d 595, 606, 194 USPQ 527, 537-38 (CCPA 1977)
(taking notice of the high level of predictability in mechanical or electrical environments
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