Appeal No. 2003-0124
Application No. 09/487,832
858 F.2d 731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988)("Enablement is not precluded by the necessity for some
experimentation . . . . However, experimentation needed to
practice the invention must not be undue experimentation. The
key word is 'undue,' not 'experimentation'.")(footnotes,
citations, and internal quotation marks omitted). In Wands, the
court set forth a number of factors which a court may consider in
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. The court
has 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.").
66
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007