1 35 USC 112, 1 st paragraph enablement Enablement Practice in TC 1600 Deborah Reynolds, SPE

2 35 U.S.C. § 112, first paragraph n "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention."

3 35 U.S.C. § 112, first paragraph n "The specification shall contain a written description... of the manner and process of making and using it [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same..." (emphasis added)

4 MPEP § n "In making the determination of enablement, the examiner shall consider the original disclosure and all evidence in the record, weighing evidence that supports enablement against evidence that the specification is not enabling."

5 For Example n If the statement of utility contains within it a connotation of how to use, and/or the art recognizes that standard modes of administration are contemplated, 35 U.S.C. 112 is satisfied.

6 For Example n If the use disclosed is of such nature that the art is unaware of successful treatments with chemically analogous compounds, a more complete statement of how to use must be supplied.

7 For Example n It is not necessary to specify the dosage or method of use if it is obvious to one skilled in the art that such information could be obtained without undue experimentation. For example, if one of ordinary skill, based on knowledge of compounds having similar physiological or biological activity would be able to discern without undue experimentation an appropriate dosage or method of use, this will be sufficient to satisfy 35 U.S.C. 112.

8 In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) n The determination that "undue experimentation" would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations.

9 MPEP § n "The primary object of the examination of an application is to determine whether or not the claims define a patentable advance over the prior art. This consideration should not be relegated to a secondary position while undue emphasis is given to non-prior art or 'technical' rejections. Effort in examining should be concentrated on truly essential matters, minimizing or eliminating effort on technical rejections which are not really critical. Where a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some sterotyped expression." (emphasis added)

10 Forman Factors n the nature of the invention n the state of the prior art n the predictability or lack thereof in the art n the amount of direction or guidance present n the presence or absence of working examples n the breadth of the claims n the quantity of experimentation needed

11 The nature of the invention

12 The state of the prior art

13 State of the Art n If the statement of utility contains within it a connotation of how to use, and/or the art recognizes that standard modes of administration are contemplated, 35 U.S.C. 112 is satisfied.

14 State of the Art n If the use disclosed is of such nature that the art is unaware of successful treatments with chemically analogous compounds, a more complete statement of how to use must be supplied.

15 The predictability, or lack thereof, found in the art

16 In re Marzocchi, 169 USPQ 367 n "In the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. This will especially be the case where the statement is, on its face, contrary to generally accepted scientific principles. Most often, additional factors, such as the teachings in pertinent references, will be available to substantiate any doubts that the asserted scope of objective enablement is in fact commensurate with the scope of protection sought and to support any demands based thereon for proof."

17 MPEP § n "The scope of the required enablement varies inversely with the degree of predictability involved, but even in unpredictable arts, a disclosure of every operable species is not required. A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements...However, in applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims.”

18 The amount of direction or guidance present

19 In re Marzocchi, 169 USPQ 367 n "As a matter of Patent Office practice, then, a specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support."

20 The presence or absence of working examples

21 Ex parte Maas, 9 USPQ2d 1746 n "Substantiating evidence may be in the form of animal tests which constitute recognized screening procedures with clear relevance to utility in humans. See Ex parte Krepelka, 231 USPQ 746 (Board of Patent Appeals and Interferences 1986) and cases cited therein."

22 Ex parte Maas, 9 USPQ2d 1746 n "First, although appellants' specification describes certain in vitro experiments, there is no correlation on this record between in vitro experiments and a practical utility in currently available form for humans or animals. It is not enough to rely on in vitro studies where, as here, a person having ordinary skill in the art has no basis for perceiving those studies as constituting recognized screening procedures with clear relevance to utility in humans or animals" (emphasis added)

23 Ex parte Balzarini, 21 USPQ2d 1892 n "There is no evidence of record that experimental animal models have been developed in this area which would be predictive of human efficacy."

24 Cross v. Iizuka, 224 USPQ 739 n "Cross is arguing that there must be a rigorous correlation of pharmacological activity between the disclosed in vitro utility and an in vivo utility to establish practical utility. We, however, find ourselves in agreement with the Board that, based upon the relevant evidence as a whole, there is a reasonable correlation between the disclosed in vitro utility and an in vivo activity, and therefore a rigorous correlation is not necessary where the disclosure of pharmacological activity is reasonable based upon the probative evidence."

25 The breadth of the claims

26 Breadth of the Claims n With respect to the adequacy of disclosure that a claimed genus possesses an asserted utility, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if it would be deemed likely by one skilled in the art, in view of contemporary knowledge in the art, that the claimed genus would possess the asserted utility.

27 Breadth of the Claims n Proof of utility will be required for other members of the claimed genus only in those cases where adequate reasons can be advanced by the examiner that would establish that a person of ordinary skill would conclude that the genus as a whole does not possess the asserted utility. Conversely, a sufficient number of representative examples, if disclosed in the prior art will constitute a disclosure of the genus to which they belong.

28 The quantity of experimentation needed

29 The quantity of experimentation needed n 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).

30 Decision Tree

31 Decision Tree

32 Decision Tree

n Claim [1] rejected under 35 U.S.C. 112, first paragraph, because the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [2] the invention. [3].

n Claim [1] rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5].

35 Practical Tips in Writing the Rejection n Look for enabled embodiments and, if found, communicate to applicant which embodiments are enabled. n Be concise. n Focus on those factors which lead to a conclusion of lack of enablement. n Emphasize specific reasons for the conclusion of lack of enablement. n Tailor your discussion to the particulars of the claimed invention. n Do not use speculative phrases. n Support statements with evidence and/or sound scientific reasoning.

36 How can an invention be both obvious or anticipated and not enabled?

37 Questions?