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.
8
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