Appeal No. 2007-0079 Page 10
Application No. 10/159,749
specification of the application.” In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). “[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.’” Id. at 1561, 27 USPQ2d
at 1513.
“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988). Those 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.” Id. Accordingly, we will address the
evidence of record as it relates to the factors set forth in Wands.
A. Breadth of the claims:
As discussed above, the claims before us on appeal are directed to a
method which uses, inter alia, a deletion mutant of a sequence selected from the
group consisting of SEQ ID NO: 2 or 8. Accordingly, the deletion mutant may be
of any size as long as it is derived from either SEQ ID NO: 2 or 8 and has the
functional activity set forth in the claims.
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