Appeal No. 2005-0147
Application No. 10/203,081
make and use the full scope of the claimed invention without undue experimentation.
Enzo Biochem Inc. v. Calgene Inc., 188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135 (Fed.
Cir. 1999); Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365, 42 USPQ2d
1001, 1004 (Fed. Cir. 1997); PPG Ind., Inc. v. Guardian Ind. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996); In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 495-96, 20 USPQ2d
1438, 1444-45 (Fed. Cir. 1991). “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 at 495, 20 USPQ2d at 1444. In determining whether a disclosure
would require undue experimentation, the court set forth several factors to be
considered. These factors 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.
Here, we find that the examiner has not applied the facts of this case to the
Wands factors in a meaningful way, but simply states that it can be “inferred” that it
would require undue experimentation for one skilled in the art to discover new viral
reaper proteins from other viral families based on her own inability to find such proteins
in a database search. More than inferences are required to make a prima facie case of
non-enablement. Although enablement is a question of law, it must nevertheless be
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