Appeal 2007-0266
Application 09/929,227
1 disclosure is enabling under 35 U.S.C. §112, Para. 1, is a question of law that we
2 review de novo, based on underlying factual inquiries that we review for clear
3 error.”)).
4 The factual premises of the enablement analysis were addressed in In re
5 Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the court
6 explaining that determination of whether the requisite amount of experimentation
7 is undue may include consideration of:
8 (1) the quantity of experimentation necessary, (2) the amount of direction or
9 guidance presented, (3) the presence or absence of working examples, (4)
10 the nature of the invention, (5) the state of the prior art, (6) the relative skill
11 of those in the art, (7) the predictability or unpredictability of the art, and (8)
12 the breadth of the claims.
13
14 See Amgen, Inc. v. Chugai Pharm. Co., 727 F.2d 1200, 1213, 18 USPQ2d
15 1016, 1027 (Fed. Cir. 1991) (stating that the Wands factors are illustrative, not
16 mandatory and that what is relevant to an enablement determination depends upon
17 the facts of the particular case).
18 Furthermore, “[w]hether undue experimentation is needed is not a single,
19 simple factual determination, but rather is a conclusion reached by weighing many
20 factual considerations. Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
21 “A claimed invention is unpatentable if the differences between it and the
22 prior art are such that the subject matter as a whole would have been obvious at the
23 time the invention was made to a person having ordinary skill in the pertinent art.”
24 In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir. 2006) (citing
25 35 U.S.C. § 103(a) (2000)); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148
26 USPQ 459, 467 (1966). “The ultimate determination of whether an invention
27 would have been obvious is a legal conclusion based on underlying findings of
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