Appeal 2007-2486
Application 10/429,369
practice the invention is undue or unreasonable. Minerals Separation v.
Hyde, 242 U.S. 261, 270 (1916), cited in In re Wands, 858 F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the
statute does not use the term “undue experimentation,” it has been
interpreted to require that the claimed invention be enabled so that any
person skilled in the art can make and use the invention without undue
experimentation. Wands, 858 F.2d at 737, 8 USPQ2d at 1404. Several
factors that may be considered in determining whether undue
experimentation is required to make or use the claimed invention include:
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence 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 predictability or unpredictability of the art, and (8)
the breadth of the claims. Wands, 858 F.2d at 737, 8 USPQ2d at 1406.
During examination, the claims must be interpreted as
broadly as their terms reasonably allow. In re American Academy of Science
Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004)
(The USPTO uses a different standard for construing claims than that used
by district courts; during examination the USPTO must give claims their
broadest reasonable interpretation in light of the specification.). This means
that the words of the claim must be given their plain meaning, unless, the
plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
In this present appeal, Appellant has not defined in the Specification
the claim phrase “in the absence of an oxidizing agent.” Accordingly, as the
Examiner indicates on pages 7 and 8 of the Answer, the broadest reasonable
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