Appeal 2007-1200
Application 09/900,251
(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;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The examiner’s analysis must
consider all the evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. Id., 8 USPQ2d at 1404.
When the challenged subject matter is a computer
program that implements a claimed device or method,
enablement is determined from the viewpoint of a skilled
programmer using the knowledge and skill with which
such a person is charged. The amount of disclosure that
will enable practice of an invention that utilizes a
computer program may vary according to the nature of
the invention, the role of the program in carrying it out,
and the complexity of the contemplated programming, all
from the viewpoint of the skilled programmer.
Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941, 15 USPQ2d 1321,
1329 (Fed. Cir. 1990) (citing In re Sherwood, 613 F.2d 809, 817, 204 USPQ 537,
544 (CCPA 1980), cert. denied, 450 U.S. 994, 101 S.Ct. 1694, 68 L.Ed.2d 193
(1981)).
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