Ex Parte Sommer - Page 8



             Appeal 2007-1344                                                                                  
             Application 10/045,789                                                                            
             1971)).                                                                                           
                   It is well-established law that the test for compliance with the enablement                 
             requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as               
             filed, is sufficiently complete to enable one of ordinary skill in the art to make and            
             use the claimed invention without undue experimentation.  In re Wands, 858 F.2d                   
             731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).   “Enablement is not precluded                    
             by the necessity for some experimentation . . .  However, experimentation needed                  
             to practice the invention must not be undue experimentation.  The key word is                     
             ‘undue,’ not ‘experimentation.’”  In re Wands, 858 F.2d at 736-737, 8 USPQ2d at                   
             1404.                                                                                             
                   To evaluate whether a disclosure would require undue experimentation, the                   
             Federal Circuit has adopted the following factors to be considered:                               
                   (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.                                                           




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