Appeal No. 2005-1975 Page 5
Application No. 09/819,292
We begin with the rejection of claim 30 under 35 U.S.C.
§ 112, first paragraph as lacking enablement. An analysis of
whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of
the appealed claims as to enable one skilled in the pertinent art
to make and use the claimed invention. The test for enablement
is whether one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known in
the art without undue experimentation. See United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed.
Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re Stephens,
529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
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
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