Appeal No. 2006-0299 Page 6
Application No. 09/964,412
Cir. 1988).[2] That some experimentation may be required is not fatal; the issue
is whether the amount of experimentation is ‘undue.’” In re Vaeck, 947 F.2d 488,
495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis original). In any case,
as explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564,
37 USPQ2d 1618, 1623 (Fed. Cir. 1996), undue experimentation has little to do
with the quantity of experimentation; it is much more a function of the amount of
guidance or direction provided:
[T]he question of undue experimentation is a matter of degree. The
fact that some experimentation is necessary does not preclude
enablement; what is required is that the amount of experimentation
“must not be unduly extensive.” Atlas Powder Co. v. E.I. DuPont
de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413
(Fed. Cir. 1984). The Patent and Trademark Office Board of
Appeals summarized the point [ ] when it stated:
The test is not merely quantitative, since a
considerable amount of experimentation is
permissible, if it is merely routine, or if the
specification in question provides a reasonable
amount of guidance with respect to the direction in
which the experimentation should proceed to enable
the determination of how to practice a desired
embodiment of the invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
2 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 (BdPatAppInt 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
(footnote omitted).
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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