Appeal No. 2002-0652
Application No. 08/465,072
factors to be considered in determining whether a disclosure
would require "undue experimentation" are summarized in In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The Wands factors "are illustrative, not mandatory. What is
relevant depends on the facts." Amgen, Inc. v. Chugai Pharm.
Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed. Cir.
1991). The enablement requirement is separate and distinct from
the written description requirement of § 112, first paragraph.
See Vas-Cath, Inc. v. Mahurkar , 935 F.2d at 1563, 19 USPQ2d at
1117. A specification may enable one skilled in the art to make
and use an invention and yet still not describe it. Id. at 1561,
19 USPQ2d at 1115.
It appears that the examiner's position is that since there
is no written description of certain limitations, one of ordinary
skill in the art would not be enabled to make those limitations
without undue experimentation. This does not fit the test for
enablement. While we agree with the written description
rejections, the fact that limitations are not described does not
establish that it would take undue experimentation for one of
ordinary skill in the art to make what is claimed. The level of
skill in the pertinent arts of computers, memory architecture,
and computer programs was high. Although the Wands factors are
only for guidance, the examiner has not provided any explanation
of why one of ordinary skill could not make the broadly claimed
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