Editing MPEP 2164
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The | The enablement requirement refers to the requirement | ||
of 35 U.S.C. 112, first paragraph that the specification | of 35 U.S.C. 112, first paragraph that the specification | ||
describe how to make and how to use the | describe how to make and how to use the | ||
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The purpose of the requirement that the specification | The purpose of the requirement that the specification | ||
describe the invention in such terms that | describe the invention in such terms that | ||
one skilled in the art can make and use the claimed | one | ||
skilled in the art can make and use the claimed | |||
invention is to ensure that the invention is communicated | invention is to ensure that the invention is communicated | ||
to the interested public in a meaningful way. | to the interested public in a meaningful way. | ||
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claimed invention. However, to comply with 35 | claimed invention. However, to comply with 35 | ||
U.S.C. 112, first paragraph, it is not necessary to | U.S.C. 112, first paragraph, it is not necessary to | ||
“enable one of ordinary skill in the art to make and | |||
use a perfected, commercially viable embodiment | use a perfected, commercially viable embodiment | ||
absent a claim limitation to that effect. | absent a claim limitation to that effect.” CFMT, Inc. v. | ||
Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d | |||
1940, 1944 (Fed. Cir. 2003) (an invention directed to | |||
a general system to improve the cleaning process for | |||
semiconductor wafers was enabled by a disclosure | |||
showing improvements in the overall system). | |||
Detailed procedures for making and using the invention | Detailed procedures for making and using the invention | ||
may not be necessary if the description of the | may not be necessary if the description of the | ||
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the art to make and use the invention. A patent claim | the art to make and use the invention. A patent claim | ||
is invalid if it is not supported by an enabling disclosure. | is invalid if it is not supported by an enabling disclosure. | ||
The enablement requirement of 35 U.S.C. 112, first | The enablement requirement of 35 U.S.C. 112, first | ||
paragraph, is separate and distinct from the description | paragraph, is separate and distinct from the description | ||
requirement. Therefore, the fact that an additional limitation to a claim may | requirement. Vas-Cath, Inc. v. Mahurkar, | ||
935 | |||
F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. | |||
Cir. 1991) (“the purpose of the ‘written description’ | |||
requirement is broader than to merely explain how to | |||
‘make and use’”). See also MPEP § 2161. Therefore, | |||
the fact that an additional limitation to a claim may | |||
lack descriptive support in the disclosure as originally | lack descriptive support in the disclosure as originally | ||
filed does not necessarily mean that the limitation is | filed does not necessarily mean that the limitation is | ||
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portion of the application, the specification | portion of the application, the specification | ||
should be objected to for lacking the requisite support | should be objected to for lacking the requisite support | ||
for the claimed subject matter. This is an objection to the | for the claimed subject matter using Form Paragraph | ||
7.44. See MPEP § 2163.06. This is an objection to the | |||
specification only and enablement issues should be | specification only and enablement issues should be | ||
treated separately. | treated separately. | ||
2164.01Test of Enablement [R-5] | |||
Any analysis of whether a particular claim is supported | Any analysis of whether a particular claim is supported | ||
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pertinent art to make and use the claimed | pertinent art to make and use the claimed | ||
invention. | invention. | ||
The standard for determining whether the | |||
specification meets the enablement requirement was | |||
cast in the Supreme Court decision of Mineral Separation | |||
v. Hyde, 242 U.S. 261, 270 (1916) which postured | |||
the question: is the experimentation needed to | |||
practice the invention undue or unreasonable? That | |||
standard is still the one to be applied. 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. | |||
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. | |||
Cir. 1988). See also United States v. Telectronics, Inc., | |||
857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. | |||
1988) (“The test of enablement is whether one reasonably | |||
skilled in the art could make or use the invention | |||
from the disclosures in the patent coupled with information | |||
known in the art without undue experimentation.”). | |||
A patent need not teach, and preferably omits, | |||
what is well known in the art. In re Buchner, 929 | |||
F.2d | |||
660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); | |||
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 | |||
F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), | |||
cert. denied, 480 U.S. 947 (1987); and Lindemann | |||
Maschinenfabrik GMBH v. American Hoist & Derrick | |||
Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. | |||
Cir. 1984). Any part of the specification can support | |||
an enabling disclosure, even a background section | |||
that discusses, or even disparages, the subject matter | |||
disclosed therein. Callicrate v. Wadsworth Mfg., Inc., | |||
427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion | |||
of problems with a prior art feature does not | |||
mean that one of ordinary skill in the art would not | |||
know how to make and use this feature). Determining | |||
enablement is a question of law based on underlying | |||
factual findings. In re Vaeck, 947 F.2d 488, 495, | |||
20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder | |||
Co. v. E.I. du Pont de Nemours & Co., 750 F.2d | |||
1569, 1576, 224 | |||
USPQ 409, 413 (Fed. Cir. 1984). | |||
Factors to be considered when | UNDUE EXPERIMENTATION | ||
The fact that experimentation may be complex does | |||
not necessarily make it undue, if the art typically | |||
engages in such experimentation. In re Certain Limited- | |||
Charge Cell Culture Microcarriers, 221 USPQ | |||
1165, 1174 (Int’l Trade Comm'n 1983), aff’d. sub | |||
nom., Massachusetts Institute of Technology v. A.B. | |||
Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. | |||
1985). See also In re Wands, 858 F.2d at 737, | |||
8 | |||
USPQ2d at 1404. The test of enablement is not | |||
whether any experimentation is necessary, but | |||
whether, if experimentation is necessary, it is undue. | |||
In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, | |||
219 (CCPA 1976). | |||
2164.01(a)Undue Experimentation Factors | |||
There are many factors to be considered when | |||
determining whether there is sufficient evidence to | determining whether there is sufficient evidence to | ||
support a determination that a disclosure does not satisfy | support a determination that a disclosure does not satisfy | ||
the enablement requirement and whether any necessary | the enablement requirement and whether any necessary | ||
experimentation is | experimentation is “undue.” These factors | ||
include, but are not limited to: | include, but are not limited to: | ||
(A)The breadth of the claims; | |||
(B)The nature of the invention; | |||
(C)The state of the prior art; | |||
(D)The level of one of ordinary skill; | |||
(E)The level of predictability in the art; | |||
(F)The amount of direction provided by the | |||
inventor; | |||
(G)The existence of working examples; and | |||
(H)The quantity of experimentation needed to | |||
make or use the invention based on the content of the | |||
disclosure. | |||
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, | |||
1404 (Fed. Cir. 1988) (reversing the PTO’s determination | |||
that claims directed to methods for detection of | |||
hepatitis B surface antigens did not satisfy the enablement | |||
requirement). In Wands, the court noted that | |||
there was no disagreement as to the facts, but merely a | |||
disagreement as to the interpretation of the data and | |||
the conclusion to be made from the facts. In re Wands, | |||
858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court | |||
held that the specification was enabling with respect | |||
to the claims at issue and found that “there was considerable | |||
direction and guidance” in the specification; | |||
there was “a high level of skill in the art at the time | |||
the application was filed;” and “all of the methods | |||
needed to practice the invention were well known.” | |||
858 F.2d at 740, 8 USPQ2d at 1406. After considering | |||
all the factors related to the enablement issue, the | |||
court concluded that “it would not require undue | |||
experimentation to obtain antibodies needed to practice | |||
the claimed invention.” Id., 8 | |||
USPQ2d at 1407. | |||
It is improper to conclude that a disclosure is not | It is improper to conclude that a disclosure is not | ||
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related to each of these factors, and any | related to each of these factors, and any | ||
conclusion of nonenablement must be based on the | conclusion of nonenablement must be based on the | ||
evidence as a whole. | evidence as a whole. 858 F.2d at 737, 740, 8 USPQ2d | ||
at 1404, 1407. | |||
A conclusion of lack of enablement means that, | A conclusion of lack of enablement means that, | ||
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was filed, would not have taught one skilled in the art | was filed, would not have taught one skilled in the art | ||
how to make and/or use the full scope of the claimed | how to make and/or use the full scope of the claimed | ||
invention without undue experimentation. | invention without undue experimentation. In re | ||
Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, | |||
1513 | |||
(Fed. Cir. 1993). | |||
The determination that | The determination that “undue experimentation” | ||
would have been needed to make and use the claimed | would have been needed to make and use the claimed | ||
invention is not a single, simple factual determination. | invention is not a single, simple factual determination. | ||
Rather, it is a conclusion reached by weighing all the | Rather, it is a conclusion reached by weighing all the | ||
above noted factual considerations. | above noted factual considerations. In re Wands, | ||
858 | |||
F.2d at 737, 8 USPQ2d at 1404. These factual | |||
considerations are discussed more fully in MPEP | |||
§ | |||
2164.08 (scope or breadth of the claims), | |||
§ | |||
2164.05(a) (nature of the invention and state of the | |||
prior art), § 2164.05(b) (level of one of ordinary skill), | |||
§ 2164.03 (level of predictability in the art and | |||
amount of direction provided by the inventor), | |||
§ | |||
2164.02 (the existence of working examples) and | |||
§ | |||
2164.06 (quantity of experimentation needed to | |||
make or use the invention based on the content of the | |||
disclosure). | |||
2164.01(b)How to Make the Claimed Invention | |||
As long as the specification discloses at least one | As long as the specification discloses at least one | ||
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that bears a reasonable correlation to the entire scope | that bears a reasonable correlation to the entire scope | ||
of the claim, then the enablement requirement of | of the claim, then the enablement requirement of | ||
35 U.S.C. 112 is satisfied. | 35 | ||
U.S.C. 112 is satisfied. In re Fisher, 427 F.2d 833, | |||
Failure to disclose other methods by which the claimed invention | 839, 166 USPQ 18, 24 (CCPA 1970). Failure to disclose | ||
other methods by which the claimed invention | |||
may be made does not render a claim invalid under | may be made does not render a claim invalid under | ||
35 U.S.C. 112. | 35 | ||
U.S.C. 112. Spectra-Physics, Inc. v. Coherent, Inc., | |||
827 F.2d 1524, 1533, 3 USPQ2d 1737, 1743 (Fed. | |||
Cir.), cert. denied, 484 U.S. 954 (1987). | |||
Naturally, for unstable and transitory chemical | Naturally, for unstable and transitory chemical | ||
intermediates, the | intermediates, the “how to make” requirement does | ||
not require that the applicant teach how to make the | not require that the applicant teach how to make the | ||
claimed product in stable, permanent or isolatable | claimed product in stable, permanent or isolatable | ||
form. | form. In re Breslow, 616 F.2d 516, 521, 205 USPQ | ||
221, 226 (CCPA 1980). | |||
A key issue that can arise when determining | A key issue that can arise when determining | ||
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screening. | screening. | ||
The Court in In re Ghiron, 442 F.2d 985, 991, 169 | |||
USPQ 723, 727 (CCPA 1971), made clear that if the | |||
practice of a method requires a particular apparatus, | practice of a method requires a particular apparatus, | ||
the application must provide a sufficient disclosure of | the application must provide a sufficient disclosure of | ||
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The same can be said if certain chemicals are required | The same can be said if certain chemicals are required | ||
to make a compound or practice a chemical process. | to make a compound or practice a chemical process. | ||
In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, | |||
691 (CCPA 1981). | |||
2164.01(c)How to Use the Claimed Invention | |||
If a statement of utility in the specification contains | If a statement of utility in the specification contains | ||
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recognizes that standard modes of administration are | recognizes that standard modes of administration are | ||
known and contemplated, 35 U.S.C. 112 is satisfied. | known and contemplated, 35 U.S.C. 112 is satisfied. | ||
In re Johnson, 282 F.2d 370, 373, 127 USPQ 216, 219 | |||
(CCPA 1960); In re Hitchings, 342 F.2d 80, 87, | |||
144 | |||
USPQ 637, 643 (CCPA 1965). See also In re | |||
Brana, 51 F.2d 1560, 1566, 34 USPQ2d 1437, 1441 | |||
(Fed. Cir. 1993). | |||
For example, it is not necessary to specify the dosage | For example, it is not necessary to specify the dosage | ||
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discern an appropriate dosage or method of use without | discern an appropriate dosage or method of use without | ||
undue experimentation, this would be sufficient to | undue experimentation, this would be sufficient to | ||
satisfy 35 U.S.C. 112, first paragraph. | satisfy 35 U.S.C. 112, first paragraph. The applicant | ||
need not demonstrate that the invention is completely | |||
safe. See also MPEP § 2107.01 and § 2107.03. | |||
When a compound or composition claim is limited | When a compound or composition claim is limited | ||
by a particular use, enablement of that claim should | by a particular use, enablement of that claim should | ||
be evaluated based on that limitation. | be evaluated based on that limitation. See In re Vaeck, | ||
947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. | |||
1991) (claiming a chimeric gene capable of being | |||
expressed in any cyanobacterium and thus defining | |||
the claimed gene by its use). | |||
In contrast, when a compound or composition | In contrast, when a compound or composition | ||
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enabling for the claimed invention. | enabling for the claimed invention. | ||
2164.02Working Example | |||
Compliance with the enablement requirement of | Compliance with the enablement requirement of |