Appeal No. 2003-0843 Page 4
Application No. 09/198,728
paragraph of 35 U.S.C. § 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to
which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those in the art to make and use the
invention without 'undue experimentation.' In re Wands, 858 F.2d
731, 8 USPQ2d 1400 (Fed. Cir. 1988). 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).
The Federal Circuit has set out a number of factors that are
relevant to whether undue experimentation would be required to
practice a claimed invention. 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." In re Wands, 858 F.2d at 737, 8 USPQ2d
at 1404 (Fed. Cir. 1988). These factors are generally referred
to as the "Wands factors."
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