Appeal No. 2002-0449 Page 6
Application No. 09/037,409
and having the physiological effect of promoting sperm motility. The specification
exemplifies a single glycoprotein (from buffalo serum) meeting these criteria, and
indicates that an immunologically cross-reactive protein has been detected in the
sera of four other species. See page 5. The specification discloses no other
physical or chemical characteristics of these other proteins.
“[T]o be enabling, the specification of a patent must teach those skilled in
the art how to make and use the full scope of the claimed invention without
‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993) (emphasis added). “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). These factors 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.” Id.
Upon return of this case, the examiner should consider whether, in light of
the guidance provided by the specification and the knowledge of those skilled in
the art, undue experimentation would have been required to practice the full
scope of the claims.
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