Appeal No. 2003-0936
Application No. 09/532,806
Factors to be considered in determining whether a
disclosure would require undue experimentation have been
summarized by the board in Ex parte Forman[, 230 USPQ
546, 547 (Bd. Pat. App. & Int. 1986)]. They 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.
There appears to be minimal differences in appellants’ and the
examiner’s respective views of the evidence relative to each of the
factors material to their respective determinations whether or not
appellants’ specification would have required persons skilled in
the art to make and use the full scope of the claimed invention
without undue experimentation. On balancing the weight of the
collective evidence relating to all the material factors, the
scales do not significantly sway one way or another. Appellants
and the examiner appear to agree that, for any person skilled in
the art to make and use the full scope of the claimed invention, a
considerable amount of trial and error experimentation would be
required. However, the specification provides a considerable
amount of direction and guidance in that effort and cites prior art
which suggests that the kind and amount of experimentation are
routine. Appellants point to their working examples, but the
examiner finds the whole and only one functionally effective 639 bp
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