Appeal No. 2006-0809 Page 4
Application No. 10/887,631
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA
1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art
to make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). “Enablement
is not precluded by the necessity for some experimentation . . .. However,
experimentation needed to practice the invention must not be undue
experimentation. The key word is ‘undue,’ not ‘experimentation.’” In re Wands,
858 F.2d at 736-737, 8 USPQ2d at 1404.
To evaluate whether a disclosure would require undue experimentation, the
Federal Circuit has adopted the following factors to be considered:
(1) The quantity of experimentation needed to make or use the invention
based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence 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;
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