Appeal 2006-2729
Application 10/193,363
Suitable factors for analysis under this statutory provision are set forth
in Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (citing Ex parte Forman, 230
USPQ 546, 547 (Bd. Pat. App. & Int. 1986)); see also Warner-Lambert Co.
v. Teva Pharmaceuticals USA, Inc., 418 F.3d 1326, 1337-39, 75 USPQ2d
1865, 1872-73 (Fed. Cir. 2005) (quoting Wands, 858 F.2d at 736-37, 8
USPQ2d at 1403-04). 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.” Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
In this case, the Examiner has not established as a matter of fact that
one skilled in this art with knowledge of the state of the prior art would not
have been reasonably led by the guidance in the Specification, including the
cited prior art and the illustrative examples, to select functional material and
surfactants within the definitions of these materials specified in claim 1 to
make and use the full scope of the claimed processes and products of such
processes without a quantity of experimentation that is undue.
Consideration of such factors as the relative skill of one skilled in the art and
the state of the prior art of which that person would be aware is basic to the
determination of whether the direction or guidance in the Specification
would necessitate undue experimentation to arrive at the claimed processes
and products encompassed by the appealed claims. See, e.g., In re Howarth,
654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981) (every detail of the
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