Appeal No. 2002-1291 Page 5
Application No. 08/693,052
immunity in particular, it would require undue experimentation for
one of ordinary skill in the art to practice the invention throughout
the scope of the claims.
Id.
Appellant argues, relying on the statement of the examiner that
techniques are known in the art to test for compositions having the desired
properties, that it would not require an undue amount of experimentation by one
skilled in the art to practice the claimed invention. Appeal Brief, pages 8-9. We
agree, and therefore reverse the rejection.
The examiner bears the initial burden of showing nonenablement. See In
re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
“[E]nablement requires that the specification teach those in the art to make and
use the invention without ‘undue experimentation.’ . . . That some
experimentation may be required is not fatal; the issue is whether the amount of
experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495, 20
USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis in original). Some
experimentation, even a considerable amount, is not “undue” if, e.g., it is merely
routine, or if the specification provides a reasonable amount of guidance as to
the direction in which the experimentation should proceed. See In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The primary concern of the examiner appears to be breadth of the claims.
The examiner admits, however, that “it may be so that techniques that are known
and conventional can be used to test for the desired properties,” thus the
examiner has not met the burden of demonstrating that it would require an
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