Appeal No. 2006-1784 Παγε 3
Application No. 10/668,819
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner's rejection under 35 U.S.C. § 112, first paragraph.
We initially note that it is well settled that the examiner bears the initial burden of
providing reasons why a supporting disclosure does not enable a claim.
In re Marzocchi, 439 F. 2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). It has long
been held that "[t]o be enabling, the specification of a patent must teach those skilled in
the art how to make and use the full scope of the claimed invention without 'undue
experimentation.'" Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365, 42
USPQ2d 1001, 1004 (Fed. Cir. 1997) (quoting from In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993)). Further, in In re Wands, 858 F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988) the court stated that 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 (Bd. Pat. App. & Int.
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,
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