Appeal 2007-1454
Application 11/088,528
1 Accordingly, it is our finding that claims 1, 2, 6-11, 14, 18-22, 25, 26, 30-35, 38
2 and 42-46 do not lack novelty over the Matsumoto reference.
3 PRINCIPLES OF LAW
4 “Enablement requires that ‘the prior art reference must teach one of ordinary
5 skill in the art to make or carry out the claimed invention without undue
6 experimentation.’” Elan Pharms., Inc. v. Mayo Found., 346 F.3d 1051, 1054, 68
7 USPQ2d 1373, 1376 (Fed. Cir. 2003) (remanding the case to the district court for a
8 determination of whether the prior art reference enabled persons of ordinary skill
9 to make the invention without undue experimentation)(citing Minnesota Mining
10 and Manufacturing Co. v. Chemque, Inc., 303 F.3d 1294, 1301, 64 USPQ2d 1270,
11 1278 (Fed. Cir. 2002) and Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
12 1369, 52 USPQ2d 1129, 1134 (Fed. Cir. 1999)(“Whether undue experimentation
13 would have been required to make and use an invention, and thus whether a
14 disclosure is enabling under 35 U.S.C. § 112, ¶ 1, is a question of law that we
15 review de novo, based on underlying factual inquiries that we review for clear
16 error.”)).
17 The factual premises of the enablement analysis were addressed in In re
18 Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). The court
19 explaining that determination of whether the requisite amount of experimentation
20 is undue may include consideration of:
21 (1) the quantity of experimentation necessary, (2) the amount of direction or
22 guidance presented, (3) the presence or absence of working examples, (4)
23 the nature of the invention, (5) the state of the prior art, (6) the relative skill
24 of those in the art, (7) the predictability or unpredictability of the art, and (8)
25 the breadth of the claims.
26
27 See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213, 18 USPQ2d
28 1016, 1027 (Fed. Cir. 1991) (stating that the Wands factors are illustrative, not
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