Question 35
Domain 1: Patentability Requirements and Patent FundamentalsWhich of the following Wands factors is considered when determining whether a specification enables the claimed invention?
Correct answer: B
Explanation
Under 35 U.S.C. § 112, a specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. One of the Wands factors is “the amount of experimentation necessary,” so the amount of experimentation needed to practice the invention is considered in the enablement analysis.
Why each option is right or wrong
A. The commercial success of the invention
B. The amount of experimentation needed to practice the invention
Under 35 U.S.C. § 112(a), enablement is judged by whether the specification teaches a person of ordinary skill in the art to make and use the invention without undue experimentation. In In re Wands, 858 F.2d 731 (Fed. Cir. 1988), the court identified the amount of experimentation necessary as one of the relevant factors, along with the nature of the invention, prior art, predictability, and the breadth of the claims.
C. The filing date of the application
D. The number of claims in the application