Appeal No. 2004-0587
Application 09/054,304
experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not
‘experimentation’.”) (footnote, citations, and internal quotation
marks omitted). In In re Wands, the court sets 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 1404. Our reviewing 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.”).
The Examiner argues that the claims as presently constructed
read upon any transparent method known or not known to a person
of ordinary skill in the art, since the pseudo acknowledgment and
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