Rejoining Written Description and Enablement in Amgen v. Sanofi

by Dennis Crouch

In July 2018, Amgen filed its petition for certiorari asking the Supreme Court to reject the Federal Circuit’s imposition of separate “written description” and “enablement” requirements along with their various requirements and standards.  Amgen argues that the Court should simply follow the statute — requiring “a written description of the invention . . . in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.”  Amgen Inc. v. Sanofi, Aventisub LLC, SCT Docket No. 18-127 (Petition filed July 23, 2018) (Cert Petition).

The basic push here is against the “possession” standard that serves as the core of the Federal Circuit’s written description requirement.  Apart from any policy arguments — Amgen argues that the statute spells out the test — and it is enablement, not possession.  Rather than focusing on what the inventor possesses, the Act requires the specification simple teach others — “as to enable an person skilled in the art . . . to make and use” the invention.

The brief provides a statutory linguistic argument that makes sense — the “grammatical structure [is] inescapable” and shows that statute provides one standard for judging the written description — the enablement standard.

This statutory argument goes a long way, but in my view will lack compelling force to the Supreme Court (as it did for the Federal Circuit in Ariad).  Rather, for 112(a), historical cases are the key since the language of 112(a) all stems directly from the Patent Act of 1793.  A grammar diagram (seemingly based upon modern language usage) is a rather weak argument for interpreting this olde language.  Rather, a successful argument here should seen in light of the history of the statute and how it has been directly addressed by the Supreme Court over the past 225 years.  In Ariad, the Supreme Court looked particularly to the Supreme Court decision in Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47 (1938) as recognizing a separate written description (possession) requirement that goes beyond mere enablement.  Although the cert petition repeatedly cites Schriber-Schroth it doesn’t actually address the portion relied upon by the Federal Circuit that served as the crux of its decision.


249 thoughts on “Rejoining Written Description and Enablement in Amgen v. Sanofi

  1. 24

    (Almost) sad to see this thread fade into the recesses of time – when clarity is at the cusp for the usual posters of MaxDrei (and yet another horse carcas at the well), Night Writer, and Joachim, and perhaps even Paul Morgan (with thanks to helpful contributions from Confused and Peter Kramer).

    1. 24.1

      “clarity is at the cusp”. What’s that then?

      I take my hat off to you, anon. But only to scratch my head. If you could only express your thoughts more clearly, you might succeed in getting more replies.

      But never mind. It’s a good laugh to see you, after such a long pause, falling back on the hoary old “horses at the well” motif.

      1. 24.1.1

        Hoary? No. While old, it not trite. but well fitting.

        As for your attempted spin of me somehow not being able to explain, just count up the number of actual explanations that you have provided on this thread (that is, things more than your feelings and usual throwing of fecal matter to see what sticks on the wall).

        Here’s a hint: it is a single digit beginning with zero.

        On the other hand, I have engaged in and provided numerous points on grammar construction, illuminating the conflation of plausibility, explained how treaties work in the US jurisprudence (and why), among other things.

        There is a phrase about carrying someone else’s jockstrap that fits you.

    2. 24.2

      I might come back to this topic tomorrow. Today is the last day to provide comments to the USPTO on Berkheimer.

      After 6 mos of suffering from vertigo and inability to do anything but think about 101-eligibility doctrine, I can’t pass up this opportunity.

      Besides, even though I probably was not the only person to make the suggestions, the USPTO does seem to have accepted some of my suggestions from the last time I commented.

      Comment: Joachim Martillo


      Comments on Request for Comments on Determining Whether a Claim Element Is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility

      The following comments have been submitted in response to the request for comments titled “Request for Comments on Determining Whether a Claim Is Well-Understood, Routing, Conventional for Purposes of Subject Matter Eligibility,” which was published in the Federal Register at 83 FR 17536 (link is external)(link is external) (April 20, 2018).

      To ensure consideration, comments must have been received by August 20, 2018.

      Submitters may review this list to ensure their submission has been received. If a comment has not been posted, please resubmit it by e-mail to (link sends e-mail).

  2. 23

    Some comments in this thread pick up on the notion of “plausibility” that is used a lot in Europe in debates about i) entitlement to priority ii) enablement and iii) obviousness. Is it TRIPS-compliant, they wonder. Likewise, some are troubled by the use of the notion of “possession” when exploring the adequacy of the “written description”.

    I see a distinction between i) using the notion of “possession” as a notion useful for teasing out the right answer to the statutory WD requirement, and ii) a court decision that declares a patent invalid for want of “possession”.

    Likewise, courts in Europe do not revoke for a lack of plausibility but, rather, for a lack of priority, inventive step or enabling disclosure.

    So how can either possession or plausible be an offence against TRIPS. Makes no sense to me. Or does TRIPS go so far as to impose a mandatory structure of argument to get to the result on the statutory ground of invalidity? I think not!

    1. 23.1

      Right on cue, here a link to a blog item dated today, Aug 17, linking possession and plausible:

      link to

      EPO Decision T2274/14. Lipid composition for improving brain function. Priority 2007, issued 2011, revoked 8/2018.

      Despite no data, no Worked Example, in the application as filed, patent granted. But then Nestec opposed.

      The content of the application as filed, says the Board, fails to render it “plausible” that the invention delivers the effect of which Applicant boasts. There is no “inventive step” discernible from the application as filed.

      What is not TRIPS compliant about any of that?

    2. 23.2

      Max, it is not that difficult to understand. However, one must first be open to the possibility that a patentability test concocted by the Boards of Appeal of the EPO might not be legally sound under TRIPS. Frankly, it does not appear to me that you are open-minded enough from this perspective.

      Anyway, here goes: TIPS Art. 29.1 sets a standard for enablement. If a patent application passes that standard, then it is enabled as far as TRIPS is concerned (though this says nothing about whether the application is novel, inventive, etc.).

      The whole purpose of TRIPS is to establish an approximately level playing field, so that Member States cannot artificially raise or lower their patentability standards in order to gain unwarranted advantages for local industries (or create non-tariff barriers to international trade). Therefore, TRIPS does not allow Member States to set an enablement bar that is any more (or less) onerous than that set out in Art. 29.1.

      Thus, based upon the language of Art. 29.1, the ONLY relevant “test” for enablement is whether the application discloses “the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art”.

      You will note that this test does NOT refer to concepts such as “plausibility” or “possession”. It merely requires the claimed invention to be reproducible by those skilled in the art, in the light of the disclosures of the application.

      Other patentability bars under TRIPS are less well defined. Thus, for example, TRIPS indicates that patents shall only be granted for inventions that “involve an inventive step” … but does not prescribe a method for determining the presence of an inventive step.

      This does not provide Member States with carte blanche to conduct inventive step assessments however they see fit. For example, I think that it is pretty clear that inventive step has to be assessed relative to the prior art. However, I am pretty certain that TRIPS permits the use of constructs such as the EPO’s problem-and-solution approach … and hence most likely permits the EPO to consider whether a claimed invention (plausibly) solves the objective technical problem that it addresses.

      1. 23.2.1

        Thanks, Confused. On enablement, I take it that there is no difference in text between TRIPS Art 29.1, the PCT, and EPC Art 83. Where there is a dispute between parties, whether any given disclosure is or is not enabling, who bears the burden of proof, and what shall be the standard of proof? Given a conflict between the witness evidence of opposed technical experts, does not “plausibility” have a role to play, in helping the tribunal to judge which of the opposed experts adduces the more persuasive evidence?

        Where am I not seeing it right? In all of this, where does non-compliance with TRIPS creep in? Can you help me further?


          Yes, I can help you further.

          Similarity / identity of wording between the EPC and TRIPS is not enough. It is the end result of the (patenting) process that counts.

          Allowing Member States to put the “right” words into their patent laws but then allowing them to interpret (or enforce) those laws in any way that they see fit would render TRIPS entirely ineffective.

          So this then begs the question of whether the “plausibility” standard used in Europe to assess sufficiency of disclosure falls within the bounds of the correct interpretation of Art. 29.1 of TRIPS.

          One can quibble over the “correct” interpretation of Art. 29.1. That is no doubt where your views and mine part company. However, I would ask you to consider this question very carefully: if, as a matter of fact, the patent application as originally filed provides sufficient information to enable reproduction of the claimed invention, how is it possible to nevertheless find the application to be “non-enabled” under TRIPS Art. 29.1?

          It is perfectly possible for a patent application to provide an enabling disclosure at a time when the applicant was not “in possession” of the claimed invention. Those are the situations where the applicant makes a “lucky” (or “educated” / “informed”) guess about what will work. My view is it is not the purpose of patent law to deny protection to an inventor who has held up his side of the bargain (ie an inventor who has told the world how to work his invention).

      2. 23.2.2

        The problem though, Confused, is that inventive step has become a shell game.

        IF one were to take the inventor at their word (as would be required if your Article 29.1 were acknowledged to have been met, then plausibility – as has seeped into the various other sections of EP law – must also be met.

        Plausible – by definition – in and of itself is directly on point as to being enabled. It is but a gossamer veneer to say that there is no incentive step BECAUSE something (either directly in the claim, or in the supporting specification) was not enabled and thus something was not plausible.

        There is nothing that can have “inventive step” that has not been enabled. The epitome of not enabling something is that THAT something is not plausible. A rose by any other name, and all.

        What I see here (per our other discussion points) is that there is a ceiling provided by 29.1 that is being broached by importing (purportedly) higher enablement requirements by Trojan horse changes in other sections.

        Are these other items actually higher? That may be a fair discussion point. If 29.1 is met, and somehow that is NOT enough to establish plausibility – no matter where else plausibility is inserted – then THAT is your TRIPS violation (per your suggested vice of the US).

      3. 23.2.3


        I do not think the following statement of yours is quite correct in how you may be applying it:

        The whole purpose of TRIPS is to establish an approximately level playing field, so that Member States cannot artificially raise or lower their patentability standards in order to gain unwarranted advantages for local industries (or create non-tariff barriers to international trade). Therefore, TRIPS does not allow Member States to set an enablement bar that is any more (or less) onerous than that set out in Art. 29.1.

        As it seems that you are applying it, TRIPS must be a ceiling across the board, and no Sovereign may differ (anywhere).

        But that is not the proper interpretation, and I think that the view of some “world wide” level is to blame.

        Instead, a Sovereign remains open to set some things as a floor and others as a ceiling – but must do so regardless of applicant nation of origin. There is NO “world wide set level.” There is – and remains – a Sovereign by sovereign level (with that sovereign by sovereign level to be the same for any one of any nation electing to play in that sovereign.


          Anon, TRIPS is accommodating of a range of different patent laws, in the sense that (in relation to most but not all aspects of the patenting process) it sets both minimum and maximum bars for patentability.

          Signing up to TRIPS (ie being a Member State of the WTO) means committing to bringing your patent laws within the “acceptable” range. A Member State can pick and choose their own way of doing things within that range. What they cannot do, however, is set laws (or tolerate judicial interpretations) that produce results outside of the acceptable range. If that happens, then other Member States are entitled to institute dispute resolution proceedings at the WTO.


            We may well be both correct, Confused – leastwise to the extent that a Sovereign has enacted specific treaty elements into law. I suggest though that there remains NO “One World Order” of a single, complete, and binding “must,” and patent law remains – as it always has been – a “sovereign centric” domain of law.


              Anon, I never suggested otherwise … or at least did not intend to. Indeed, you will note that I started the thread on TRIPS by talking about the OBLIGATIONS of the US under that treaty.

              Whilst there was a brief question mark about whether ratification of TRIPS by the US made (parts of it) directly applicable under US national law, I think that we have now established that Public Law 103-465 only enacted TRIPS with respect to the provision governing patent term (and not any other provisions, whose effect under US national law were explicitly disavowed).

              This means that the US is free to carry on as it wishes regarding current, national patent law. However, it also means that there could be (international, dispute resolution) consequences for the US, in view of the fact of the obligations under TRIPS that the US is not honouring. This happened to Canada, where the situation was eventually resolved by amendments to Canada’s patent law (to bring it into line with the TRIPS provision that Canada’s previous law had violated).

    3. 23.3

      Likewise, courts in Europe do not revoke for a lack of plausibility but, rather, for a lack of priority, inventive step or enabling disclosure.

      Obtuse. Is it deliberate?

    4. 23.4

      I see a distinction between
      i) using the notion of “possession” as…statutory WD requirement, and
      ii) a court decision that declares a patent invalid for want of “possession”.


      Did you mean to leave the comment like that?


          Do you realize that leaving the comment like that means that you intended to say nothing meaningful?


              Your lack of realizing that is NOT a small part as to why your posts so often are challenged as ludicrous.

              It is one thing to have an opinion (everyone has one, and anyone can share theirs).

              It is another to have an informed opinion (which makes legal discussions actually valuable).

              It is yet another to not even care or bother to realize that what you are posting is tripe, and eminently meaningless – as are the comments of your so very often.

  3. 22

    Deciding whether specific subject matter is “enabled” is problematic because one cannot do it fairly unless one has the evidence of technical experts, tested by cross-examination.

    This is not necessary for deciding whether Applicant had “possession” at the filing date or, as the EPO would see it, added matter during prosecution at the PTO.

    In this way, the notion of “possession” provides an efficient way for the PTO to rule on priority contests under the FtF regime of the AIA.


    1. 22.1

      On what basis do you claim “this is not necessary?”

      It is absolutely necessary – even for running on ANY priority contests. And how often would your (supposed) out of a priority contest occur in a FtF regime, let alone a FItF regime under the AIA (under the AIA, there is no FTF, as the regime is correctly labeled a First Inventor to File regime).

      Your sense of “efficiency” seems misguided at best, and a ludicrous reach on its face.

      1. 22.1.1

        I’m reading the Auris decision (Fed Ct on “possession”) in the context of the current Battle Royal going on before the Boards of Appeal of the EPO between the CRISPR Group in Califonia and the one in New England. Which of those Groups was the First to File?

        One patent was just revoked at the EPO, inter alia for want of “written description”, which reminds me of the Auris case. There is a lot of money involved in that revoked European patent. EPC-land has 600 million consumers. And although the Decision is hot news it is only by the Opposition Division. The Appeal Board has not yet spoken.

        How about enablement, as the issue to resolve the dispute between the parties? Thinking on this, I recall MM’s comments on the eligibility issue in software patents. Neither side will attack for lack of eligibility because that attack bites back on its own patent portfolio just as effectively. So it is, that in chem/bio, one refrains from putting enablement in issue for fear of blowing away one’s own patent holding. In the CRISPR patent priority contest at the EPO, both sides deploy WO publications drafted to best practice standards. Which of the two parties is ready to assert that the other’s disclosure is non-enabling?

        But somehow the priority contest has to be resolved. The notion of “possession” fits perfectly with First to File environment and the 40+ years the EPO Boards of Appeal have accrued in adjudicating priority contests. Under the EPC, by the way, the Established Caselaw of the Boards of Appeal of the EPO is unassailable, because no national Supreme Court sits atop the EPO’s Appeals Directorate. Good so, I say. Non-specialist Supreme Courts laying down Binding Precedent tend to impede rather than promote the quest for legal certainty in matters of patent validity.

        I await with interest to see how the “possession” doctrine thrives under the interference-free FItF (call it what you will, Rose by Any Other Name) AIA. It’s simple to understand, it’s intuitively right, it’s relatively easy to adjudicate. Bring it on!


          If plausibility is involved, brush away the veneer of which (other) section of law is such being inserted into and return to answer the question of enablement.

          If indeed enabled, then must be plausible, then the insertion of plausible wherever else is moot.


              Inapposite to the immediate point.

              You continue to be obtuse, even with the gentle chiding from Confused. You need to open your mind and see through the thin veneer concocted with “plausibility.”

              See the shell game in process.

              Understand that if the single section of enablement is actually met, then the hobby horse of plausibility must disappear – and disappear wherever it is being inserted.

      1. 22.2.1

        Indeed. Just like obviousness. And no easier than obviousness.

        There are easier routes to a finding that a claim is not valid, aren’t there Joachim?

        There is a practical need to resolve questions of validity of a claim without resorting to a full-blown enquiry into what was obvious. Aren’t there Joachim?


          Whether or not there are easier ways to challenge a granted claim – alleging it to be not valid – ALL elements of the law must be met while examining claims (and yes, amendments to claims).

          As such – any type of “relative ease” is at best a minor point. “Inquiry” as it were (examination) does NEED to properly cover all of the items.

          As I have noted, what I can see in the EPO treatment of “plausibility” is a leakage of not properly gauging enablement in a first instance. If properly gauged (and engaged), something deemed enabled cannot possibly have an issue with “plausibility,” no matter where that “plausibility” is imported into considerations.

          It’s amazing that no one as yet called out the shell game so obviously [pun intended] going on.


            Just a side note. Don’t most obviousness judgments result from underreading KSR v. Teleflex?

            Cobbling together limitations is a no-brainer for the most part, but KSR v. Teleflex requires more, for it states, “If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.”

            Maybe I have mostly read poorly argued office action and review proceeding documents that argue for obviousness, but the party claiming obviousness really should create a workable design and plan to implement the combination alleged to be obvious as if he had no knowledge whatsoever of applicant’s or patent owner’s invention including its existence.

            Even in the predictable arts that may be very hard. As far as I know, no one else has managed to do what we did at Clearpoint with parasitic or stray capacitance or inductance. It required developing a test suite to determine PCB characteristics that combined a lot of standard tests and a lot of math partially developed by experimentation.

            Clearpoint tended to operate by trade secret, but suppose it patented a board and provided full enablement for the manufacture of that board. Suppose that the patent claims were challenged on obviousness grounds by cobbling together a bunch of prior art references. The petitioner would never have been able successfully to create a working board without the information contained in the patent to Clearpoint’s invention.

  4. 21

    Given the discussions in this thread about written description in the context of amending a claim during prosecution, I want to invite readers to review on the PatentDocs blog, August 7, 2018, the case of Otonomy v Auris.

    Auris US ‘865 issued June 30, 2015. It tracked back to a PCT filing on September 28, 2005. The DC gave Auris the benefit of that date, thereby seeing off Otonomy’s prior art

    But the Fed Ct found that the only WD Support for the claimed invention was in an amendment that Auris filed at the PTO in the year 2014. Accordingly, Auris lost on appeal to the Fed Ct its priority contest with Otonomy.

    As the Fed Ct observes: the test for sufficiency of WD is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession…..”. Possession in 2005? Or not until 2014? The difference is enormous.

    What the EPO calls “Free from added matter” the Fed Ct calls “Possession”.

    Now that the USA is immersed in a First to File environment, to throw Schriber-Schrott jurisprudence out of the window would have grotesque and egregious repercussions.

    1. 21.1

      Max, is contravention of 37 CFR 1.121 (f) during prosecution grounds for revocation of a granted patent? If so, then I think that the “possession” standard applied to 35 U.S.C. 112 is entirely unnecessary … especially as it appears that there is no reason for the courts not to apply that standard to unamended claims.

      1. 21.1.1

        Do courts frequently revoke patents during prosecution for violation of 37 CFR 1.121 (f)?

        I have only amended a written description and drawings in preliminary amendment, and I have made minor corrections under 37 CFR 1.312. In preliminary amendment (and I suppose in written description and drawing amendments during substantial prosecution), I carefully detail and justify the changes. If there were a problem, the examiner should have caught it.

        Here is an example preliminary amendment.

        link to


          I meant:

          Do courts frequently invalidate patents during proceedings for violation of 37 CFR 1.121 (f)?

          I didn’t mean:

          Do courts frequently revoke patents during prosecution for violation of 37 CFR 1.121 (f)?

    2. 21.2

      to NOT understand Schriber-Schrott (and my – unanswered – point vis a vis what is nigh boilerplate) would have even more grotesque and egregious repercussions.

  5. 20

    Interesting in parts, this thread, for its discussion of the concepts of enablement, new matter and “possession”.

    With the arrival of the AIA and FtF, the concepts of “conception” and “diligence” are futsch. Instead, as between rival filers, the only thing that “counts” is who filed what, when, at the PTO. It happens very often, that trade rivals P1 and P2 file at much the same time, P2 just after P1, for much the same subject matter, concept X, but with different illustrated embodiments of X, and a rule is needed, to sort out who gets what in terms of exclusive rights.

    Further, it often happens, that i) the PTO search reveals that concept X, as such, is unpatentable and ii) P1’s perusal of P2’s 18 month PTO “A-publication” alerts the earlier filer (P1) to what is the still patentable invention (Xabc) of true commercial value. That is, what P2 claimed and what P1, with hindsight knowledge of P2’s disclosure, should have claimed in P1’s application as filed, on P1’s (earlier) filing date.

    P2 was the party who was in truth the first to file on Xabc, but now P1 has slid into his pending application a claim to Xabc. Shall P1 be allowed to take that claim to issue, to deprive P2 of the chance to practise his own invention?

    Some here assert that P1 fails for want of an enabling disclosure. Others would assert that P1 fails because the inserted claim adds matter. I say that what we in Europe call “new matter” the courts of the USA dub a want of “possession” at the P1 filing date.

    I’m curious to see how the courts decide such cases, as more AIA cases go to trial.

    1. 20.1

      You assume your own conclusion and STILL do not follow the conversation below.

      The “hook” has not changed one whit in regards to the passage of the AIA. Our law on the disclosure/enablement/“possession” triad remains as it was prior to the AIA. I know that YOU “want” it to be different, but your desire has no place here.

      You cling (seemingly perpetually) to a hobby horse that is just not pertinent.

      1. 20.1.1

        I’m not suggesting it is new. Just that under FtF it will assume greater importance in the administration of justice and the resolution of disputes between rival filers at the USPTO. There are more than 1000 trials of patent validity, between rival parties, at the EPO, each year. A high proportion of them are between parties who file heavily and continuously, on similar subject matter. Representing these parties is how I earn my crust.


          I’m not suggesting it is new.

          I am glad to hear that. As it is, your posts though are not in sync with the sentiment that you are expressing.

          Representing these parties is how I earn my crust.

          Nice to see the admission as to the source of your bias, and to see how your “not suggesting” keeps on coming across as actually suggesting.

  6. 19

    It is beginning to dawn on me that the problem here is, not for the first time, a lacuna in the US statute that the courts are struggling to plug.

    TRIPS does not directly address the issue of how to handle amendments to the claims that introduce new subject matter. However, that does not mean that it is impossible to interpret TRIPS Article 29 as permitting Member States to set a bar that requires the application as originally filed to contain a clear and unambiguous disclosure of “the invention” defined in the claims.

    Other Member States have legal provisions that directly address this point. In the US, however, all we have is 35 U.S.C. 112. Frankly, that provision seems ill-equipped to address the issue at hand. This is because requiring 35 U.S.C. 112 to perform a dual (enablement AND added matter) function necessitates interpreting “The specification shall contain a written description of the invention” to simultaneously have two, very distinct meanings: the first meaning being that the specification must provide an enabling disclosure and the second meaning being that the specification must provide a clear and unambiguous disclosure.

    With this in mind, it seems to me that such “forced” / improbable interpretations of the statute (and all of the crazy arguments over sentence constructions) could be eliminated simply by amending 35 U.S.C. to include a separate provision that prohibits the addition of new matter.

    Any takers?

    1. 19.1

      Hooray! Somebody who gets the point.

      Years ago, when the AIA came into effect, I explained that under a First to File regime, the S 112 “written description” requirement would assume additional importance. Whether you call it “added matter” after filing or “possession” at the filing date doesn’t matter to me. What does matter is covetous claiming. Or, if you will, a workable FtF successor to interference proceedings, to ensure that it is indeed the first to file at the PTO with an announcement of the invention claimed in the issuing patent, together with an enabling disclosure of that subject matter, that gets the exclusive rights to that very subject matter. And not misappropriator P, who re-writes his claims to capture the invention he discovers in the A-publication of q’s patent application, filed a week later than his own patent application.

      I think the correct interpretation of S 112 is not one that is “forced”. In short, if they are so minded, the courts can fix the issue without any need to amend the Statute. But will they? Are they being briefed adequately? are they smart enough to see the core issue?

      1. 19.1.2

        I think the correct interpretation of S 112 is not one that is “forced”.

        I am still waiting for you to provide your version of the controlling grammar.

        For all of your “Hooray” about someone reaching what you think the point is, you seem unable or unwilling to actually make the point yourself.

    2. 19.2

      Confused, please see Peter Kramer at below. Can you answer his point about the long reach of the notion of “enablement”? Is it long enough to deal with your worry about added matter?

      Me, I’m mulling it over still.

      1. 19.2.1

        Not to diminish Peter’s part, but I laugh at your refusal to give credit where credit is due.

        Would it pain you that much to recognize my prodding of you?

      2. 19.2.2

        No, it does not deal with my concern. Non-enablement and addition of new matter are, in conceptual terms, entirely distinct from one another. For one thing, there can be no added matter objection to an original claim, whereas non-enablement can apply to either an original or an amended claim.

        This debate is starting to remind me of the case currently being considered by the UK Supreme Court, as it relates to the use of the “plausibility” standard for assessing enablement. To my mind, “plausibility” (much like “possession”) has no place in the assessment of enablement. This is because the standard set by TRIPS merely requires the disclosure of the patent to enable reproduction of the claimed invention. That is a matter that can be decided purely on the facts, without any need to consider whether, based upon the disclosure of the patent and common general knowledge at the filing date, it was “plausible” that what the patent tells the skilled person to do would actually work as claimed.

        It is a different question entirely whether TRIPS permits Member States to use different legal grounds to deal with purely “speculative” (but subsequently justified) claiming. For example, I am not sure if there is any basis under TRIPS to object to the European Patent Office applying a “plausibility” standard for the assessment of inventive step.


          That’s a very interesting observation, thanks, Confused.

          Indeed, the “plausibility” test criterion troubles many people. But I’m not one of them. My practice is largely with oppositions at the EPO, where the OD and the TBA has to find a way to do justice between the opposed sides, upholding good patents and striking down bad ones.

          Setting the terms of the validity debate around the concept of plausibility allows both sides to set out their case optimally. Do you disagree? Do you think it skews the result unfairly?


            The question at the heart of all of this is whether it is (or should be) a function of the patent system to provide a reward for “educated” (or, as the case may be, “lucky”) guesses made by patent applicants.

            To be frank, I do not have a strong opinion either way on this issue. That is, I can see circumstances in which court rulings one way or the other might be genuinely “harsh” on either a patentee or a putative infringer. However, in general, I would be in favour of upholding validity in the case of an “educated” guess.

            Nevertheless, if legislators want to prohibit the granting of patents based upon such guesses, then my view is that it would be necessary to amend both national and international laws to achieve this objective. This is because, as things currently stand, there is nothing in TRIPS that permits Member States to apply a higher “disclosure” bar than that set out in Article 29.1.


              I remember when the AIA going through Congress and the headless chickens were running amok, fretting that inventors would have to file on mere speculation or else see another get in first, at the PTO. I counselled that filing prematurely was the worst thing to do. Your application would be published at 18 months but you would end up with nothing.

              The “plausible” standard seems to me to be working well. Those with a specification that makes their claimed subject matter “plausible” (with in vitro comparative data, for example) do alright. Those with no such data in their application as filed routinely come to grief.

              The skill of the drafter (inventor, and inventor’s employer) is to draft a finely graduated set of claims (anon’s Ladder of Abstraction, if you will) that will deliver maximum enforceable scope from a small set of experimental data. But here again, the “plausibility” standard is useful for settling what scope is allowable.

              I don’t understand how “plausible” is not in line with TRIPS. Again, see Kramer in this thread.


                I don’t understand how “plausible” is not in line with TRIPS.

                Plausible = f(enablement).

                You have yet to answer my questions on point as to 112(a) and the grammatically correct construction. You have “hinted” at “easy,” “no problem,” and the like, and yet nothing solid from you.

                Shall we take this thrust here with “plausible” to be that the single “how” clause in 112(a) is the ONLY statutory (and if need be, statutory/treaty-modified) authority on how to judge BOTH of the “what” or “of” clauses?

                Is it because this is an area in which you earn your bread that you have NOT committed to an actual answer?


              Lucky? A scientist (a friend who was professor ant an Ivy) once went to China (over twenty years ago) to collect urine samples of cancer patients. He realized how unique a hormone in one of the samples was – never before or since – seen in nature. A monoclonal antibody to the hormone was raised and patented, and is still used in diagnostic laboratories throughout the world to this day. Louis Pasteur: “Chance favors the prepared mind.”
              Congress: “Patentability shall not be negated by the manner in which the invention was made.”
              I think Congress agrees with Pasteur.


                Peter: I think that you misunderstand the meaning of “lucky” in the context of my post. It refers to the subject matter of a claim in an application that was filed at a time when the applicant was not “in possession” of the invention described by that claim (or, in European terminology, at a time when it was not “plausible” that the invention would work as claimed … in the sense that the claimed invention was purely speculative at that time).

                1. Confused,

                  You appear to now be “judging” “possession” under the enablement “how.”

                  As noted herein, the plausibility = f (enablement).

                  Was that your intent?

                2. Anon, “plausibility” is currently a confusing (and confused!) concept under European laws.

                  It is primarily used by the EPO to assess inventive step. In that context, it is most definitely NOT related to enablement.

                  It has also been used in the context of enablement, in particular by the UK courts. We shall soon see what the UK Supreme Court makes of that approach.

                  My feeling is that it is not possible to draw a direct connection between either of these approaches and the “possession” standard adopted by the Federal Circuit. However, it seems to me that they attempt to address the same, underlying “evil”: namely, what one might term purely speculative claiming. I will freely admit that I may well be wrong on this, though.

                3. Confused,

                  Thank you.

                  I am not sure how the folding in of “inventive step” is contemplated with “plausibility.”

                  I would think that you either have “inventive step” or you do not, and that judging inventive step is to be taken at taking the description at its word. If that were to be done, then the (seemingly embedded) question of enablement of that word is what is really going on.

                  Two questions for you:
                  1) is having an apparent embedded enablement question an understandable position? That is, does the view “translate” such that you can see that the inventive step examination is perhaps doubling (or even merely sharing) the duty of the enablement examination?

                  2) per your own views on “floor/ceiling/neither” per TRIPS regulations, is now the EP requiring more than TRIPS allows for the “inventive step” determination?

                4. Confused,

                  I did some quick checking at lunch and realize that it is far worse that you portray.

                  “Plausible” appears to be MIS-used and is seeping into several different patent concepts. It’s original seepage into “inventive step” appears to be exactly in line with my initial reaction: there is a conflation of enablement into what is your “obviousness” realm.

                  One of the articles I read mentioned that ALL of “plausibility” is outside of TRIPS.

                  If so, then your original foray into US violating TRIPS may be turned around in spades with EPO allowed seepage of “plausibility” into several patent doctrines.

    3. 19.3

      We have such a separate provision.

      See Code of Federal Regulations. 37 CFR 1.121 (f):

      “No new matter. No amendment may introduce new matter into the disclosure of an application.”

      1. 19.3.1

        What is meant by “disclosure”? If that encompasses the claims (as well as the description), then I think that settles the matter: the “possession” standard applied by the Federal Circuit represents both judicial overreach and a contravention of the obligations of the US under TRIPS.

        One more question, though: why do PTO Office Actions always object to questionable amendments under 35 U.S.C. 112 (instead of under 37 CFR 1.121 (f))?


          Disclosure is the submitted application – everything that the applicant has disclosed to the Office.

          I do not know the answer to your question as to why the hook of 35 USC 112 is used.


            I believe that disclosure is used since amendments may cover more than just the claims. Amendments to other parts of the specification including drawings are covered by 37 CFR 1.121(f).


              Anon: are you suggesting that 37 CFR 1.121(f) in some way duplicates part of the scope of 35 USC 112? That would seem a somewhat unlikely explanation.


                Not what I am suggesting.

                And thank you for above distinguishing that which MaxDrei appears to desire to conflate.

                1. If that is not what you are suggesting, then my original question still stands. Perhaps it will help if I rephrase:
                  If the PTO is of the view that an amendment to the claims introduces new matter, why do they object under 35 U.S.C. 112 (and not 37 CFR 1.121 (f))?

                  Put another way, if the PTO’s basis for objecting is the introduction of new matter, why raise 35 U.S.C. 112 at all? If that provision does not duplicate 37 CFR 1.121 (f), then the PTO is effectively trying to deal with a problem of new matter by alleging non-enablement. Whilst I can see how that might work in some cases, I can also see other circumstances in which new matter might be adequately enabled by the disclosures of the application as originally filed.

                2. If the PTO is of the view that an amendment to the claims introduces new matter, why do they object under 35 U.S.C. 112 (and not 37 CFR 1.121 (f))?

                  That is the question that I thought you asked in the first place.

                  My answer remains the same: “I do not know the answer to your question as to why the hook of 35 USC 112 is used.

                  Maybe someone “in charge” at the Office can supply an answer.

                3. first reply is caught in the “do not have a dialogue” count filter.

                  As to “I can also see other circumstances in which new matter might be adequately enabled by the disclosures of the application as originally filed.

                  How? Are you not here just “begging the question” as to what does it mean to possess (noting that the captured/blocked comment touches on that it appears that your version of possessed is TIED TO plausibility = f (enablement)).

                  Can you explain how a disclosure that properly and fully enables somehow does not “possess?”

                  Can you do this for OUR 112(a)?

                  Can you show the grammatically driven reading of our 112(a) that provides for such a view? (and by this, I mean a proper, or at least cohesive grammatically driven reading)

                4. anon asks the following.

                  Can you explain how a disclosure that properly and fully enables somehow does not “possess?”

                  I may be able to give an example that even belongs to predictable arts. (Unfortunately, the case was not fully litigated.)

                  I worked for Clearpoint, whose products were reverse engineered without infringement from patent-protected technologies.

                  Wang accused a Clearpoint memory product of infringing:

                  1) patent 4656605, Single in-line memory module

                  2) patent 4727513, Signal in-line memory module.

                  The case never went to trial. Clearpoint built its memory product without a capacitor because thanks to careful engineering the Clearpoint board used stray or parasitic capacitance in place of a capacitor.

                  In a trial we would have argued:

                  1) there was no literal infringement,

                  2) Wang did not possess an embodiment that used stray capacitance as a capacitor (a very hard engineering problem that Wang did not solve, but we did),

                  3) Doctrine of Reverse Equivalents because the Clearpoint memory operated in a substantially different than the technology which Wang patented.

                5. Sorry Joachim, but your example does not fit what I am asking for.

                  Given the (alleged, but taken as true) notion that the two items “substantially differed,” you have not shown the first portion of “properly and fully enables.”

                  I am looking for that condition to have been met, BUT that “possession” is deemed not had.

                  Contrapositive conditions do not suffice.

                6. Anon may be correct. In my Dr. Evil persona I can justify practically any technological position. For this reason I worked on a strategy to argue in the alternative for non-infringement.

                  Suppose I qua Dr. Evil (2) were working for Wang. Here is how I would respond.

                  1) There is literal infringement because a capacitor is a capacitor.

                  2) Electronic design is a predictable art. If it can be described it can be done. My crew, who would have to be cloned for Wang, used the motto, “We can do anything possible. The impossible just takes a little longer.”

                  3) At the quantum solid state level, stray capacitance and a macroscopic capacitor function in exactly the same way.

                  The ultimate decision might hinge on whether Dr. Evil (1) or Dr. Evil (2) was more persuasive to the CAFC.

                  If we were all stupid (Clearpoint was) and slugged it out to the final knockout, we would have been looking at a case comparable to determining whether Hyatt or Boone invented the microprocessor.

                  That case ultimately hinged on deciding whether Hyatt’s reduction to practice was prophetic or speculative. Because I am a solid-state physicist, the ultimate deciding question in Wang v. Clearpoint might have been possession.

    4. 19.4


      I invite you to explore my point below as to the ability to sidestep the type of ipsis verbis exactude that such as MaxDrei and Paul Morgan seem to be wanting. First at the 3.2 point of the comment thread and then picked up again at the 7.1 point.

      Since MaxDrei believes that you get the point, maybe you can translate what I have provided such that MaxDrei is willing to recognize the point.

      Heck, if MaxDrei does that, I won’t mind him giving you the credit.

      1. 19.4.1

        Anon, whether or not your proposed solution deals with the issue depends upon whether the patent office or court in question accepts that a generic statement can provide an “individualised” disclosure of each and every possible combination covered by that statement (no matter how many millions or billions of combinations that might be).

        My experience is that the European patent offices and courts tend to view generic, “catch all” language relating to combinations of embodiments as effectively adding nothing in terms of “individualised” disclosures.


          I will fully grant that the Euro view is much more aligned with an ipsis verbis condition.

          I will also fully state that the US view is NOT the Euro view.
          And expressly so.

          In my note below, I DO provide some basis for distinguishing what would be covered by any such boilerplate (as well as what I consider a “must” caveat for ANY boilerplate).



          My looking into the EPO “plausibility” mess reinforces the differences going on as to my direct point here.

          No wonder the likes of Paul Morgan and MaxDrei absolutely refuse to discuss the item on its merits.


            Anon, I agree that “plausibility” is problematic when applied to the assessment of enablement: see my comment at 23.2.

            I think that the chances of any national / regional patent law being 100% TRIPS-compliant are pretty low, especially given the ability of courts to come up with some unusual interpretations (or, in countries such as the US, judge-made laws).



              Perhaps we have a translation error here – you cannot be agreeing with me that “plausibility” is problematic when applied to the assessment of enablement – because that is the precise place that “plausibility” IS TO BE applied.

              Rather, it is the seepage of applying plausibility outside of enablement that “sneaks in” (possible) enablement requirements in violation of TRIPS under the gossamer fabric of other sections of law.”

              As I stated – if enablement is met (properly met), then there can be NO “plausibility” question remaining, and any attempt to insert “plausibility” into other sections of law becomes moot.


                Anon, the only thing that I can say is that your definition of “non-inventive” may not be the same as my definition of “non-inventive”. Sadly, there are more ways for assessing inventive step / obviousness than there are Member States of the WTO … and therein lies the problem.

                You might feel that the EPO’s approach to inventive step includes a “disguised” enablement requirement. You may have a point. But with so many different ways of conducting inventive step assessments, who can say with certainty whether the EPO’s approach falls outside of the “correct” interpretation of TRIPS Art. 27.1?

                1. who can say with certainty whether the EPO’s approach falls outside of the “correct” interpretation of TRIPS Art. 27.1?

                  That’s easy.

                  Anyone who can reveal that a shell game is going on.

                  How is that done?

                  Hey, I am only running with the thought that you initiated, Confused.

                  A rose by any other name and all.

                  IF one takes it that TRIPS Art. 27.1 is met, then enablement is met and that means that plausibility must also be met.

                  As I indicated, mooting plausibility at the section of law where it initially rests, then MUST moot it no matter where else in the law it is being sought to be inserted.

                  Unless – and this is your point – unless, something beyond the ceiling is being imported.

                  These other “Ends” may be all fine and good for whatever desired effect it is that is being offered, but as we both know (especially in law), the Ends do not justify the Means, and the Means must be proper.

  7. 18

    I am frankly astonished that not one single commentator appears to have given a moment’s thought to the fact that, under TRIPS, the US is obliged to apply an enablement standard. See TRIPS Article 29:
    “…an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art …”.

    If US law requires anything more onerous than under this standard, then the US is violating its obligations under TRIPS.

    1. 18.1

      How is requiring more than TRIPS Article 29 a violation of TRIPS?

      Allowing genus claims invites greater stringency.

      Article 29
      Conditions on Patent Applicants

      1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.

      2. Members may require an applicant for a patent to provide information concerning the applicant’s corresponding foreign applications and grants.

      1. 18.1.1


        Where is your statement of “Allowing genus claims invites greater stringency. supported in the text that you then supply? I see no such invitation there.

        This is not to say that somewhere else there may be an invitation. This is to say that the invitation simply is not there in the “corresponding” section to our 35 USC 112(a).

      2. 18.1.2

        Joachim, please see TRIPS Article 27.1:
        “Subject to the provisions of paragraphs 2 and 3, patents SHALL be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application”.

        This is in effect instructing WTO Member States to grant patents if the standards set out in TRIPS are satisfied.

        The whole purpose of TRIPS is to provide a harmonised set of standards, including minimum and maximum bars for patentability. This helps to eliminate barriers to international trade that might otherwise arise if Member States were free to arbitrarily set patentability bars outside of the range covered by TRIPS.


          Does the written description requirement of 112 ever come up anytime other than a claim amendment?


            I certainly hope so – given that “genus of inventions” is nothing more than climbing even a single rung on the “Ladder of Abstraction.”

            Otherwise, you would necessarily require an UNENDING picture claim.

    2. 18.2

      A few quick points, Concerned (traveling today, so I will leave these as suggestions as opposed to definitive statements):

      a) has Trips Article 29 been officially incorporated into US law? I ask because just because we signed a treaty, such may not be the same as being our law (e.g., portions of Berne took decades to be officially adopted).

      b) is this particular section a “floor,” “ceiling,” or does it not matter? Some treaty sections set mininimum levels, with recognition that signatories may elect more stringent national terms. Is this (the level to pass for showing written description) one of those? I have a comparative textbook at my home office, but maybe someone has a quicker reference).

      c) thanks for the add to the dialogue.

      1. 18.2.1

        a) Yes. But that is still a good question. This is because, to my knowledge, the constitutional significance of TRIPS has not yet been the subject of a US court ruling. From a simplistic perspective, however, I would have thought that the provisions of an international treaty that has been properly ratified by the US would take precedence over those of any US national statutes.

        b) See my response to Joachim above.

        c) You’re welcome.


          a) “ratifying a treaty” and putting treaty terms expressly into Code are two different things. See Berne.

          b) ok – putting “a)” on hold for the moment, your view of Trips Article 29 is that of a ceiling (nothing “higher” or more stringent).

          c) no problem – if “a)” is taken as “encoded” (for argument’s sake), the point you raise is an excellent one, and our law would need to comply. Even our “judge-made” common law (and even if the genesis of that “judge-made” basis is unsupported by grammatical or logical decomposition of the controlling Statutory [now, and again for argument’s sake, Treaty-Augmented] law).


            I would add (just to rub salt into Night Writer’s open wounds of his not making his own case and my using his own statements to show the opposite) that regardless of “a),” at least one “logical” construction result would be one that reflects what those putting the TRIPS accord together expected as to the equivalent section of law.

            This is NOT to say that absent “a),” any sense of “comparative law” must dictate what US law is. I remain guarded against the over-application of comparative law.

            It IS to say that a mere blanket statement attributing a grammar-based view of applying the single “how” clause (a clause separated with a hard comma), as to being applied to both of the “what” clauses as being somehow “not logical” is itself not sustainable.

            Apparently, TRIPS believes that such a treatment is eminently logical.


              anon, you still have provided no explanation for why you think that all the (3) modifiers are attached to (1) and not (2).

              Your sentence analysis was to just wipe out (2) and plow (3) into (1). Not the way modifiers attach.

              Plus, the point –again–of “, and” is that it indicates a new noun phrase. You have no explanation of this “, and.” Etc. You are going to force me to spend an hour or so and do a formal analysis of this sentence.


                Completely wrong Night Writer – I even expressly told you that there was no “jumping over.”

                I think that you are still off in that you wanted to fold the first half of the “what” or “of” prepositional phrases into being your baseline. You cannot treat the two “what” or “of” prepositional phrases so differently.

                It’s almost humorous that you are accusing me of getting this wrong as you continue to flounder.


                Of it takes you an hour, maybe you shouldn’t be proclaiming how you have been taught in the finest curriculums. My initial post on the matter – one in which Joachim keeps on getting closer to – took no more than three minutes. Even posting per your own provided rationales took no more than seven minutes of a thinking.

                Here’s a hint: if you are spending more than twenty minutes trying to force a conclusion to fit your feelings, you are NOT abiding by ANY set of grammar (or logic) rules.

                I told you: I will be gentle when you acquiesce.

                1. anon, you have no idea what you are talking about in terms of grammar.

                  Anyone would tell you to do a proper analysis of this sentence one would need to look at other example uses to try and make an argument for how that “,in such …” should be interpreted and for how the “, and of” should be interpreted.

                2. Plus you never explained the “, and” and your arguments seem to hinge on saying that the comma before “in such” indicates that all of (3) modifies the head noun. Not a convincing argument.

                  As I said it would take time to analyze this sentence. The reason is that it has so many problems.

                  But frankly the most convincing evidence that (3) hangs off (2) and not the “written description” is that (3) is a restatement of (2).

                  Not sure why you think you have won. You have not responded to my posts and the analysis you have provided is deeply flawed.

                3. anon, the 5 minute analysis is clearly that (3) hangs off of (2). The reason it would take a couple of hours is that examples of usage would have to found to make arguments to explain the use of the commas.

                4. I have “won”: because I HAVE responded – and I have responded with YOUR OWN provided rules.

                  You are the one that has not responded to that rejoinder.

                  I do not need the examples that may take hours to find. Let’s see you overcome your own stated logic (as I have spelled out nigh a half dozen times or so already).

                5. hinge on saying that the comma before “in such” indicates that all of (3) modifies the head noun. Not a convincing argument.

                  LOL – that is YOUR argument to which you are now responding as “[n]ot a convincing argument.”

                  How have you not realized this?


            The question of whether the US is compliant with TRIPS is, in effect, a question of whether the US wants to continue its membership of the WTO (which requires its members to adhere to TRIPS). Thus, there is a practical aspect, as well as a legal aspect, to the question of whether US national law honours the obligations of the US under TRIPS.


              In all the posturing between China and Trump, I am rather surprised to have not seen already China playing the TRIPS card.


              The USA should dump TRIPS and go back to Pre-GATT patent law.

              De Toqueville points out in The State of Society in France Before the Revolution of 1789 that replacing German common law (a system like Anglo-American common law) with a system based in Roman civil law transformed free men and women into slaves.

              The more the USA incorporates European patent law in the US patent system; the sooner US inventors (and in the end all US citizens) become slaves.

              See First Inventors Then Everyone Else Becomes a Slave.

              With the Bayh-Dole Act of 1980 Congress took the almost surreptitious first step to destruction of the US patent system by legislating Ex Parte Reexamination to provide an administrative (!!!) procedure comparable to the opposition procedure of the “Convention on the Grant of European Patents of 5 October 1973.”

              Congress could easily have implemented an opposition procedure in federal district court of the basis of the ejectment proceeding.

              As Hyatt points out in his mandamus action complaint (see above graphic), the implementation of GATT term limits creates too much temptation for USPTO officials ultra vires to implement unlawful policy, to permit agency capture, or to benefit themselves from agency corruption.


            Below is an example of international law that has been incorporated into US law.

            In the graphic header I have put Article 2 and Article 3 of the International Convention on the Prevention and Punishment of the Crime of Genocide.

            On Dec 11, 1948 the USA became a signatory to the Convention.

            On Nov 25, 1988 the USA ratified the Convention.

            The Convention has been incorporated into US law under 18 U.S. Code § 1091 – Genocide.


              Joachim, I genuinely do not know what point you are trying to make.

              GATT-TRIPS was ratified by the US. One can perhaps question the effects under US law of TRIPS provisions that have no obvious counterpart in, or that conflict with, US national law. That is a question to which I have never been able to obtain a sensible answer from a US practitioner. However, it is undeniable that US legislators at least BELIEVE that the US is bound by the provisions of TRIPS. See, for example, Public Law 103-465, amending 35 U.S.C. 154 and providing for a patent term of 20 years from filing. That law was a DIRECT consequence of the ratification of GATT-TRIPS by the US (see link to

              The question that we must therefore ask is as follows: just because US legislators in 1995 took the view that 35 U.S.C. 112 was TRIPS-compliant (most likely because of close parallels with the language of TRIPS Article 29), does this necessarily mean that the manner in which 35 U.S.C. 112 is INTERPRETED by the PTO and the US courts is also TRIPS-compliant?

              To answer this question, it is necessary to first interpret TRIPS Article 29. I have to be honest and admit that I really do not see anything in the wording of that Article that even remotely correlates with the “possession” standard adopted by the Federal Circuit. Do you?


                IANAL, but as I understand, federal district courts as well as the USPTO won’t pay any attention to TRIPS until it is written into US Code just as the Convention of Preventing and Punishing the Crime of Genocide has been written into the statutes.

                35 U.S. Code Chapter 36 – INTERNATIONAL STAGE enables the Patent Cooperation Treaty in US Code.

                MPEP 1800 Patent Cooperation Treaty describes associated examination procedures. Nothing equivalent can be found for TRIPS.



                Still traveling, but this directly is the “a)” portion of my first response to you.

                For most treaties, mere ratification is not sufficient. I had offered Berne as an example, since there there are portions that were put into code decades after ratification.

                1. Anon, Joachim: I do not think that necessarily matters whether all of the relevant TRIPS provisions have been formally incorporated into US national law. The question that you need to ask first of all is whether the relevant provisions of TRIPS are “self-executing” (see link to in the sense of Medellín v. Texas (link to

                  Looking at TRIPS Article 27.1 (“… patents SHALL be available …”) and 29.1 (“Members SHALL require …”), I think that there is a fair argument that at least some of the relevant provisions are indeed “self-executing”.

                  It is a shame that the US courts have never considered this issue.

                  Regardless, as with US case law on “excluded subject matter” (as it has been stretched by SCOTUS to render patent ineligible certain methods or substances that clearly require, or that would not exist but for, the hand of man), it seems to me that there is a clear opportunity for another Member State to institute a dispute resolution procedure at the WTO, alleging that the interpretation of US patent law applied by the courts leads to a breach of the obligations of the US under TRIPS.

                  The question is, which Member State is going to initiate such a procedure?

                2. The “self-executing” is a cogent reply.

                  Yes – if so, then the premise of “a)” above as properly in code applies.

                  That being said, the use of “shall” in treaties has no bearing on the “self-execution” status. So your thinking there is errant.

                  A treaty is not broken into segments for the “self-executing test. And given as how above you point out that certain sections were deliberated upon and executed into our code, I think that you have the answer that this treaty (TRIPS) is NOT self-executing.

                  This does not (necessarily) provide an explicit answer to the “a)” item of our discussion, it just means that the avenue of self-executing is off the table.

                3. Public Law 103-465, as approved by Congress (link to, includes the following:

                  It is the objective of the United States-
                  (1) to accelerate the implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights referred to in section 101(d)(15),
                  (2) to seek enactment and effective implementation by foreign countries of laws to protect and enforce intellectual property rights that supplement and strengthen the standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights referred to in section 101(d)(15) and the North American Free Trade Agreement and, in particular-
                  (A) to conclude bilateral and multilateral agreements that create obligations to protect and enforce intellectual property rights that cover new and emerging technologies and new methods of transmission and distribution, and
                  (B) to prevent or eliminate discrimination with respect to matters affecting the availability, acquisition, scope, maintenance, use, and enforcement of intellectual property rights, …”.

                  It is noteworthy that Congress elected only to amend US patent law by changing to a 20 year patent term … but at the same time made it a formal objective of the US to ensure that there was “enactment and effective implementation” of the full TRIPS agreement in FOREIGN countries.

                  Is this another case of cake and eat it? On the basis of that law, I guess that those seeking to force the US to honour its obligations under TRIPS are out of luck … unless they are able to persuade another WTO Member State to initiate a dispute resolution process at the WTO.

                4. Indeed noteworthy – just not supportive of your view of the “a)” condition. You may note the generous caveats as to any potential conflicts between treaty terms and (actual) US law (hint: the treaties do not prevail).

                5. I can agree that the caveats to Public Law 103-465 indeed suggest that US national law prevails over contrary TRIPS provisions: hence my reference to the need to institute dispute resolution proceedings.

                  Very odd indeed that Congress would pass a law that specifically obliges the US courts to act in such a way as to ensure that (in certain circumstances) the US ends up violating its obligations under international law. I guess that it is their privilege to do so. However, it does not help to engender trust amongst the international community, especially seeing as Public Law 103-465 emphasises that the US should seek to ensure that other countries honour the very same obligations that Congress made sure did not bite on the US.

                6. Confused – what you see is a structural artifact of our separation of powers.

                  Treaty signing power by the executive was a contentious point at the start of this country.

                7. First comment stuck in the dialogue count filter.

                  Confused, it is not so odd if you remember our country’s start, its suspicion of a strong executive (who is the “lead” even if only by proxy) on treaty signings, and our separation of powers (the executive does not have the power of writing law.

                  A sovereign remains a sovereign when it retains power over its own law making system.

                  There is a mistake, often made unintentionally, to think that there is or even should be some one world order, some international law above the law of the sovereign.

                  Such was rejected by the US at its founding. The US experiment (long ago, and still yet easily losing its way) rejects the top-down Statist approach. Our system of checks and balances, of each – and every, even the judicial – branch being a branch of limited powers and each and every branch being under the Constitution is a purposeful construct.

                  It is on purpose then – and not for the ill intent (or result) that you provide that we have split the treaty power and the law making power. I find no reason to apologize for this to anyone or to any other sovereign. Those coming to the table with this Sovereign should recognize and respect this characteristic, even as they may choose – as is their sovereign choice – to operate differently.

                8. Just an aside.

                  It is helpful to keep anon’s comment in mind when one tries to understand the US pseudo-national healthcare system.

                  It is also important to note that the US system failed (with the result of a civil war) in the case of the national question of slavery and that the US is still dealing with the consequences of the failure.

                  See US Redeemers and Copperheads are Back! Russian Federation Surges Forward!.

                  The divided approach has important implications for the US patent system, which is itself divided among multiple authorities.

                9. Anon, thanks for those comments.

                  To be clear, I do not have a problem with dualist constitutions (those where treaties signed by the executive have no force under national law unless and until encoded in statute by the legislature). That is a perfectly acceptable way of operating. My problem is the double standard evident in Sec. 315(2) of Public Law 103-465: seeking to ensure that FOREIGN countries proceed with EFFECTVE implementation of ALL of TRIPS, whilst only implementing ONE provision from TRIPS (that relating to patent term) in the US … and making sure that nothing else from TRIPS is implemented in US national law.

                10. Not to be a nit, but it is NOT dualist – it is a three branch design.

                  I mention this because so often certain people here fail to remember that the judicial branch is ALSO a branch of limited powers (just like the executive and legislative branches) and that the judicial branch is ALSO a branch below the Constitution (just like the executive and legislative branches).

                  That is an extremely important point to remember, especially when it is the Supreme Court that is seriously mucking up US patent law.

  8. 17

    Anon, you seem to be trying to argue that modifiers cannot attach to a prepositional phrase. They can. Their third arrow is wrong. No chance the clerks at the SCOTUS won’t see this.

      1. 17.1.1

        No anon. What I am saying is even if we accepted your analysis of the first two “of”‘s, then all of [3] still attaches to [2] and not the head noun”a written description.”

        You have provided no explanation for the “, and”. And even if we leave off the first “of” of the basic sentence, it does not change the fact that all of the [3] modifies [2]. There is no explanation from you or anyone else how those modifiers jumped over [2]. Plus, [3] logically modifies [2].

        Anyway, if I had the energy I’d diagram the sentence and dig up some other sentences that are similar to show how the modifiers are being used.


          You claim – STILL without explanation – that ONLY the second half of the two “what” or “of” prepositional phrases is affected by the (hard comma separated) single “how” phrase.

          Your own statements as to the treatment of “,” contradict your unsubstantiated claim of “logically.”

          I am still waiting for you to explain that.

          Note that I am NOT saying that the third clause does NOT affect the second clause (there is NO “jumping over”). I AM saying that you have not shown why (grammatically OR logically) ONLY the second clause would be so affected.

          I suggest that you conserve the energy that you are expending in making unsubstantiated statements to make the statements asked of you.

  9. 16

    I am not sure the interpretation of the statute will make a big difference in the end, because possession of the invention and enablement of the full scope of the claims seem to be almost interchangeable requirements. Even if the Supreme Court overturns the Federal Circuit, and holds that “full, clear, … to enable …“ is the sole standard, I suspect that on remand, the challenged claim will still be found invalid, because the genus was not described in sufficiently full terms to enable either making or using the invention.

    1. 16.1

      I am not sure the interpretation of the statute will make a big difference in the end,” (to which I would add: [here], as in “in the end here in this case”)

      The brief discusses that (albeit, not a strong part of the brief).

      Notwithstanding any conclusion here though along a unitary standard, the impact should not be evaluated against the outcome in this case (alone).

    2. 16.2

      It is perfectly possible to claim an embodiment and to provide enablement for said embodiment but not possess it. Judge Lourie makes the point in Ariad v. Eli Lilly.

      The Reverse Doctrine of Equivalents is a similar situation in which an invention is literally within the metes and bounds of a claim — 35 USC § 112 (b) — but operates distinctly differently.

      1. 16.2.1

        How many infringers have successfully used the reverse doctrine of equivalents to escape liability?


          It is probably because the reverse doctrine of equivalents is (in my view wrongfully) a question of facts. Instead of invoking the reverse doctrine and struggling with a jury, it can be more efficient to carve out the subject matter which operates differently from the invention with claim construction (by the judge).

      2. 16.2.2


        Respectfully, by moving the goalposts to “to claim” you obscure the point about the description not properly being bifurcated (especially by the Inherency Doctrine) between enablement and disclosure.

        One may vary widely what is claimed, but what is claimed is not the point (directly) of the comment explaining what the description provides (and thus merely indirectly towards any claims).

        It’s a nice picture though.

        (I did not venture into your Lourie link).


          The hyperlink connects to the CAFC decision, which the USPTO maintains — I think — in order to make an implicit threat.

          “If we can’t reject or invalidate your application or issued patent on grounds of lack of enablement, we will reject or invalidate on grounds of lack of possession.”


            As I noted below in your fine grammar explication, where exactly do you find the statutory hook for the possession item (and further, how do you then create out of thin air anything different than the provided “how” phrase as to what satisfies the possession item?)

            I am glad I checked below before posting here. I see that for you the mere fact that the specification is to comprise a description, that you read the comprise as possessing.

            But that merely begs the point – what then are you possessing, but the description (the object of the subject of the simple sentence from which you took “comprise”).

            Further, that description is a unitary item (note the “a”), and is merely – as I laid out in simple and direct sentences per Night Writer’s “rules” – providing only one “how” clause. This one “how” clause is NOT set up to only apply to the second half of the “what” clauses – no matter how the CAFC wants to pretend otherwise.

            There is zero grammatically basis for such.

            Likewise – as argued – there is no reasonable basis either. Why in the world would Congress create a multi-part “what” and NOT create a matching multi-part “how?”

            No. What we have here is a forced “ambiguity” in order to do (as you also adroitly note) as the judges want to “find” justice to do (outside of the statute). The point here though is that the “threat” is ultra vires (for ANY cogent construction of 112).


              The text of 35 U.S. Code § 112 (a) is nearly unparsable while the punctuation is best described as inconsistent and illogical.

              In Ariad v. Eli Lilly Lourie writes the following.

              Under the amicis’ construction a portion of the statute—either “and of the manner and process of making and using it” or “[a written description] of the invention”—becomes surplusage, violating the rule of statutory construction that Congress does not use unnecessary words. See United States v. Menasche, 348 U.S. 528, 538-39 (1955) (“It is our duty ‘to give effect, if possible, to every clause and word of a statute.” (quoting Montclair v. Ramsdell, 107 U.S. 147, 152 (1883)).

              In effect, Lourie uses citation to justify something like Biblical exegesis (פרד”ס or PARDES):

              • פְּשָׁט (simple, straight) – a thorough and intensive reading and parsing of the text of the statute,

              • רֶמֶז (hints) – allegory or symbolic meaning,

              • דְּרַשׁ‬ (inquiry) – comparative analysis through related decisions, and

              • סוֹד‬ (secret, mystery) – applying esoteric and recondite meanings known only to SCOTUS and the CAFC, which often don’t agree.

              Maybe one really does have to be on an acid trip to understand this stuff.

              BTW, I qua genuine expert in matters of syntax and of punctuation disagree with both the CAFC and also with the petitioner.

              Congress placed a comma after “of the manner and process of making and using it,” separating it from the phrase “in such full, clear, concise, and exact terms as to enable.” “A qualifying phrase separated from antecedents by a comma is evidence that the qualifier is supposed to apply to all the antecedents instead of only to the immediately preceding one.”

              This comma probably makes the prepositional phrase “in such full, clear, concise, and exact terms as to enable” adverbial. As an adverbial propositional phrase it would modify “contain” and answer the question, “How shall the specification contain?”

      3. 16.2.3


        This is right. The reason as I said below is because enablement includes what any person skilled in the art would know how to do.

        That is why the written description is a good requirement to keep claims within what was intended.


          The “issue” of having a written description requirement is one giant smokescreen.

          No one that I know of is doubting the presence of a written description requirement.

          Rather, it is the meaning and test for the written description requirement (and the judicial muckery involved to twist the statute even beyond its original horrific grammar in order to come up with judge-made tests lacking a tie to the (singly provided) “how” clause in 35 USC 112 that SHOULD BE in doubt.

          Not to be a pr1 ck, but any time you want to acknowledge how I used your own rules to show how your own desired construction cannot come to pass, I will graciously accept your acquiescence.


            >> I will graciously accept your acquiescence.

            1) They are not “my” rules.

            2) Your explanation is ridiculous.

            Perhaps a good way to look at the issue is do the modifiers attach to the second “of”.


              Perhaps a good way to look at the issue is do the modifiers attach to the second “of”.

              LOL – as I have pointed out to a number of times, YOU are the one screaming for a “break” based on a “,” and yet, per your own screeching, there must be a break after the second “of.”

              Further, you (nor anyone else) have proposed a grammatical reason why the third phrase (the “how” phrase) would attach ONLY to the second of the two “of” phrases.

              Maybe you should spend less time telling my that my explanation is ridiculous (even as I follow what you post), and maybe provide an explanation that fits.

              You still have not done so.

      4. 16.2.4

        Joachim, I am not convinced judge Lourie is right about the difference between the scope of enablement and possession. The example given to show subject matter enabled but not possessed, which was found in Schriber-Schroth, does not seem to satisfy the enablement requirement. I do not agree that one can make a gas engine piston with flexible webs from teachings that, using sufficiently clear and exact terms, instruct to make the webs extremely rigid, so, to me, the flexible web piston is not enabled.
        That being said, I do not think that the Amgen petition is useful.

  10. 15

    a. In the lot next to the muffler shop a Ford, a Chevy, and a Chrysler needing muffling were parked.

    b. In the lot next to the muffler shop, a Ford, a Chevy, and a Chrysler, needing muffling were parked.

    The specification shall contain a written description of the invention, COMMA and of the manner and process of making and using it, COMMA … 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.

    Looks like b. to me.

    1. 15.1

      The punctuation rule or guidance for initial prepositional phrase is the following.

      Single word preposition whose object is a simple noun phrase should not be followed by a comma. Otherwise add a comma. There is some discretion if the preposition consists of more than one word or if the noun is preceded by a comma separated list of adjectives.

      In the old days copy-editors had prescriptive punctuation manuals. I have not seen one in a long time, and — as far as I can tell — few people younger than my sister know how to punctuate an English sentence or how to write acceptable formal English.

      Claim drafters since Robert Fulton seem invariably to split infinitives.

  11. 14

    Claims must particularly point out and distinctly claim the invention. If the invention is described such that PHOSITA would understand how to make an use, and the originally filed claim particularly points out and distinctly claims the invention, it does not seem reasonable to conclude that the inventor didn’t have possession and didn’t fully disclose the invention. After all, possession is essentially determined if PHOSITA would have concluded the inventor had possession. Thus if the claim points out and distinctly claims the invention and the description is enabling, the matter of possession is already settled.

    1. 14.1

      PK, I don’t think that is in dispute. Originally filed claims are effectively part of the specification, and can even be put into the specification by amendment. If at least one original claim that was enabled in the original specification is being claimed later there should be no dispute over “possession” of the invention for that claim.

      1. 14.1.1

        Of course the claims effectively form part of the specification. Thus if the the claim is enabling with the specific required information there is no question of whether the inventor had possession. Enablement effectively implies possession. Application of plain reading of the text of the statute is in agreement with straightforward common sense. Enablement satisfies written description requirement. (That’s what’s in dispute.)


          All fine and dandy, Peter Kramer, for the genus claim as filed. But what if, during prosecution, Applicant amends claim 1 down to one particular species within that genus, because the genus turns out to be old or obvious? I want to know whether, at the filing date, the Applicant was “in possession” of the selection invention which is the subject matter of the narrowed claim 1.

          It happens a lot, in chemical cases, that claim 1 is directed to a genus ABC……..Z.
          That turns out to be old or obvious. So Applicant P1 claims species W. There is no Example for W. The application as filed suggests that W is no better or worse than any of A…….V,XYZ. Likewise the prior art. Now though, the basis of patentability is that W is different and better than any of A…..V,XYZ. That’s a different invention, and patentable. trouble is, Applicant did not have “possession” of it on Applicant’s filing date.

          What if another, P2, filed for W, one day after P1, with a worked Example for W, and comparative data showing that W is better? In any properly functioning FtF patent system, P2’s claim to W should prevail over P1’s. But will it? Only if the S 112 “possession” requirement is enforced. Mere enablement doesn’t cut it. See Joachim Martello at 16.2 in this thread.


            Let’s try again (damm count filter – for part I):

            Part I:
            Now though, the basis of patentability is that W is different and better than any of A…..V,XYZ.

            Did your first person then actually enable this proviso of yours?

            If so, then your proviso shows enablement to be sufficient for possession.

            If not, your conclusion is faulty, as neither possession (as you seek to call it), nor enablement are present.

            Referring to Joachim above is not sufficient.

            Part II:
            On a slightly different angle, I am reminded of “Product by Process” claims wherein the product is being claimed, but the “what” of the product is a mystery. The “mechanism” of the invention remains unknown.

            Possession (as is being bandied about here)…?

            Seems like a case of “how to make” is what is possessed.

            Seems like “enablement” is possessed and – by proxy if you will – that “possession” suffices.

            Clearly, in such cases, the “written description” – as it were – is also “possessed” (in the ‘comprising’ sense).

            (how to use being presumed for this discussion, given that most Product by Process cases are not implicated with any “don’t know how to use” fact patterns).

            Part III:
            Circling back to the “W” and genus-species Chem basis of looking at the picture.

            If, as being added by proviso, the mechanism of invention for “W” places “W” outside of all the rest, does “genus-species” really apply? Is not a more correct view one that because of the (presumably natural) difference from the proviso, that “W” is not a “true” species of the larger group?

            Further, since it is a product example, does not Inherency apply? Surely, if I invent a hammer, then my invention is not “de-possessed” just because someone later invents a different use for that hammer. One does not need to possess the “different mechanisms” of possible uses to retain possession of the hammer itself.

            Should one then take a closer look at the inserted proviso to distinguish whether the genus-species was (previously) mistaken or whether the proviso merely provides a different use scenario? Was the hammer “re-invented”? Was “W” “re-invented”?

            With either path though, the “how” prepositional phrase – the single “how” prepositional phrase – within the US 35 USC 112(a) remains the only legislatively sanctioned mechanism FOR “how.”

            Part IV:
            I still await MaxDrei’s (or anyone’s) grammatical construction as to how
            ONLY the second of the two “what” (or “of”) phrases is so selectively paired with the single provided “how” phrase.


              All I’m trying to do here is to relate a bog standard situation in everyday prosecution, and enquire how S 112 deals with it. For me, “possession” is the key concept.

              Suppose my hypothetical genus is the”halogen” salt of aromatic molecule CaHbOc and my “W” is potassium.

              In the application as filed, Applicant P1 provides Worked Examples of Na and Rb, but not K. That disclosure is enough to “enable” K, no doubt about it. The disclosure in the application as filed suggests than one halogen is as good as any other halogen. Specifically, it lacks any suggestion that K is in any way different or better than any other of the halogens.

              It turns out during prosecution that K is the only species that is potentially patentable over the prior art, because, surprisingly, the K salt of CaHbOc does things that all the other halides don’t. P2’s patent application, filed one day after P1’s and directed to the K invention, has by now A-published and confirms K’s efficacy.

              P1 files a claim to species K and his own supporting comparative data to show that, indeed, K works better than Na or Rb.

              Does that claim by P1 to K fulfill the “written description” requirements of S 112? If so, how else is it to be prevented from going to issue, thereby to enrich the Inventor (P1) who was NOT P2, ie the party which was, in truth, the first to file on that specific (and in the meantime very valuable) invention.


                because, surprisingly, the K salt of CaHbOc does things that all the other halides don’t.

                You have re-established the basis for my question, but you have not yet answered my question.

                As Peter notes, and as I also noted, the dialogue has moved past your intitial post. Adding “an example” is nice, but not necessary. Can you carry the conversation further Maxdrei (as opposed to looping back to the starting point only)? Your recent post merely provides for exchanging “K” for “W” in my rejoinder.

                1. Yes. Instead of “W” which could be anything under the sun, my concrete example uses K (potassium). When the application as filed includes worked examples for Na and Rb, it is self-evident that K is enabled. That is what my K example delivers, which the W example did not.

                  The invention that Applicant enables but does not “possess” is the discovery that K performs at a higher level than any other one of the group of halogens. Prior to this invention ie on the filing date of the application, people (including the Applicant) supposed that K was no better or worse than any other halogen. That was wrong. Only after filing was the claimed invention made. At the filing date, Applicant did not “possess” it.

                2. When the application as filed includes worked examples for Na and Rb, it is self-evident that K is enabled.


                  Not per your provisio.

                  That’s rather an important point that you are not grasping (even though you provided the hypo).

                  Try again.

                  (hint: See Part I at post and yourNow though, the basis of patentability is that W is different and better than any of A…..V,XYZ.

                  Either the applicant really has enabled the “inventive mechanism” or the genus-species designation is not true (for the “inventive mechanism”) or you have the “new use of a hammer” syndrome.

                  Read again the “next step” I posted above. You still have not caught up to the discussion.

                  You are not tracking the “enabled/possessed” ideology.


            If the genus is old, and the species has some non-obvious utility, and the original specification is silent about the new species, obviously PHOSITA would not have been enabled to make AND USE. Possession is therefore moot. You may *want* to know if the inventor was in possession but its of no moment due to lack of enablement.


              I did not write that the genus has some non-obvious utility. Suppose the genus is useful as an analgesic. Suppose that species W turns out simply to be a better analgesic than all the other species in the genus.


                If it has some surprising property then exploiting that property is a new way of using. Enablement requires PHOSITA can Make AND **USE**. Thus if the K+ salt is effective at very low dose, the original specification did not enable such use by PHOSITA not taught to do so.

                1. The proposition is that the K salt is, surprisingly, a “better” analgesic than the Na or Rb salt.

                  There is no “new use”. It is just that if you take of the K salt the SAME dose as the Na salt, your headache dissipates significantly faster.

                  To deny enablement of the K salt strikes me as a false road to take, destined to end in less rather than more legal certainty, less rather than more justice.

                2. MaxDrei,

                  You cannot have it both ways. The “advance” is either enabled or it is not. The item is (properly) a species of the genus or it is not (here, the genus would be different based on the different action that leads to your desired notion of “significantly.”

                  The proposition is that the K salt is, surprisingly, a “better” analgesic than the Na or Rb salt.

                  You left out the WHY – this is a critical omission. If that WHY is based on something NOT enabled, then what Peter (and I) states and your desired position is lost. If that WHY is based on something enabled, then your desired position is ALSO lost.

                  I cannot see how you land at “To deny enablement of the K salt strikes me as a false road to take, destined to end in less rather than more legal certainty, less rather than more justice.

                  It seems like you simply do not want to accept the reasoning provided; and yet, you are not willing to engage that reasoning in any meaningful fashion.


                Nevertheless, even if you say K+ salt is “better”, exploitation of it’s “betterness” requires USING IT DIFFERENTLY. (Such as at low dose.) The original specification did not ENABLE PHOSITA to USE in the new inventive manner, i.e., at low dose. Thus if using at a surprisingly different concentration range were patentable over the prior art disclosed genus, the inventor of the later reference disclosing and exploiting this surprising new property would be entitled to patent (method), for using in a manner not previously disclosed. Genus disclosure is insufficient in this instance simply from standpoint of enablement and therefore no need to look at possession separately.

                1. Peter, I am not disputing that the filer P2, who was first to include in their application a disclosure of the relatively and surprisingly greater efficacy of K, ought to gets a patent for that contribution to the art. the issue is whether P1, who filed earlier, can get through to issue a claim to K that dominates P2.

                  What I am bothered about is that the earlier filer P1 (who filed on “halogen”) gets to issue, with a claim to K, thanks to a narrowing of his claim during prosecution. P1’s application as filed, failed to pick “K” out of “halogen”, failed to make it “plausible” that, surprisingly, K has greater efficacy than other halogens. You contend that P1’s K claim fails for want of enablement. That seems to me bizarre, but never mind because I see things through European eyes. Using “lack of enablement” to reject subject matter that ought to be rejected on other more fitting ground seems to me like storing up trouble for the future, obfuscating what claimed subject matter is, or is not “enabled”. In this regard, a claim to a composition is different from a claim to a method of use of a composition. In my hypo, P1 narrows down to a K composition. To me it seems strained to argue that his spec as filed does not enable that composition.

                  We should not forget “obviousness” as a basis for rejection of P1’s claim to K. The list already includes i) your “not enabled” ii) my “not possessed” and iii) Europe’s “new matter”.

                  I appreciate your time and effort, corresponding with me fruitfully.

  12. 13

    Below, Night Writer wants to start at a basic level and build out per his stated “rule” of “,” signifies a “break” and apply a rigorous “noun phrase” protocol.

    Let’s apply HIS rules to:

    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 or joint inventor of carrying out the invention.

    But let’s break it down to the purest simple starting point and simply break into new sentences whenever the Night Writer “must break” occurs, while fully applying his “noun phrase reasoning (without recognizing context of prepositional phrases).

    The specification shall contain a written description.

    The written description shall be of the invention.

    The written description shall be of the manner and process of making and using the invention.

    The written description shall be in such full, clear, concise, and exact terms as to enable any person skilled in the art to which the invention pertains, or with which the invention is most nearly connected, to make and use the same.

    The written description shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

    THIS is per Night Writer’s stated rules.

    1. 13.1

      anon, that is not how English works. And those were not my rules.

      What you have done is nonsense. Do you know how to diagram a sentence?

    2. 13.2

      anon >>That’s a clear error. The basic is the noun itself, and you have no justification for proceeding by attempting to classify the two halves of the “what” (the two ‘ofs’) differently.

      The question is what does all that junk after the second “of” modify. And it is very clear it modifies the second “of”. You can perhaps say that it also modifies “a written description,” but that is a level higher. What is clear is that all that junk does not modify the first “of.” (You have no idea how to parse a sentence.)

      1. 13.2.1

        The question is what does all that junk after the second “of” modify.

        Sure. That’s a question.

        And it is very clear it modifies the second “of”.

        No – not per your very own posts here.

        You have NOT explained in any way, shape or form why it would modify ONLY the second of the two “of” phrases. How many times now have I asked you to explain why you keep on saying it? (hint: “it is very clear” is not a proper explanation, especially since what else you have posted says that such cannot be)

        You keep on saying that I do not know how to parse a sentence, but the only actual explanation that you have given parses it as I have shown. You also want to parse the sentence to have the third phrase (the “how” phrase) modify only the second of the “of” phrases, but have yet explained why that would be proper.

        Let’s assume for the sake of argument that I do not know how to parse a sentence. It is clear from your posts that you do not know how to do it either. Your “explanation” does not reach what you want, and you have provide no way of reaching what you want.

        Here I am – teach me.

  13. 12

    You are all making difficulty of the text of S 112 where in truth none exists.

    The “invention” is what is in the claim (that has, or will, issue).

    This might be very different from the claim as filed.

    But the statute requires that the application as filed must contain a “written description” of that very invention.

    All the rest of S 112 explains what sort of “description” is enough. But one thing is for sure, no “written description” at all and you are not even at first base to examine whether the description is enough to meet the statute.

    No amount of written description of something other than the claimed combination of technical features can compensate for the absence, from the application as filed, of an announcement of that very subject matter.

    It is a “planting the flag” issue, like what one has with the examination of novelty, or entitlement to priority. If the flag was not planted, on the filing date, on the very spot of turf claimed, well then the S 112 “written description” requirement is not met.

    1. 12.1

      (which is exactly why your – continued – inability/choice to recognize/admit/discuss the “boilerplate” point I present(ed) is/remains most odd)

      But beyond even that, it is also a given that in the discussion here as to how to properly construe 112, that the various constructions ARE in regards to your “flag is planted” notion. So, no, there is no such “you all are making difficulty of the text of S 112 where in truth none exists.” The differing constructions cannot each be correct.

    2. 12.2

      If indeed “none exists,” MaxDrei, please be so kind as to show the proper construction and explain why the other constructions are not proper.

      Or perhaps you think that the differing constructions do not matter. Which of course would be most odd, given the topic of this thread.

    3. 12.3

      I’m too lazy to diagram this sentence. But the third arrow is wrong. All that junk of the third arrow modifies “a written description of the manner and process of making and using it”. It isn’t even close.

      Two separate noun phrases: “a written description of the invention,” and “a written description of the manner and process of making and using it.”

      The only reason that this isn’t crystal clear is that they left off the second “written description,” which they should not have.

      Plus it doesn’t even make logical sense to attach the third arrow modifiers to the first written description.

      1. 12.3.1

        Noun phrase again?

        Those are prepositional phrases that need to be analyzed, Night Writer.

        No one – including the court – is basing the construction on noun phrases.


          Then they have no idea what they are talking about.

          “a written description of the invention” is the first noun phrase.

          “a written description of the manner and process of making and using it” is the second noun phrase.


            And you know this at least because of the “, and”. I will say they have been very clever in their formatting.


            Where in the world were you taught such grammer?

            Prepositional phrases – do you know what these are?


              Where? At one of the top universities in the world.

              Let’s start off easy.

              “a written description of the invention.” What do you think that is anon? That is a noun phrase with the “of the invention” modifying “a written description.”

              The verb is “contain.” Let’s agree on that to start with. Let’s just say hypothetically that the sentence ended with “a written description of the invention.”

              So the whole sentence is “The specification shall contain a written description of the invention.” Pretty simple sentence with a pattern of NP V NP.

              Do we agree on that?


                Your “hypo” here artificially splits the two “what” prepositional phrases.

                We cannot start where you want to start.

                (Note that the brief points this out when it states that there is but one single written description – not separate written descriptions for the two halves (each) of the “what” prepositional phrases.

                1. anon, I get what the brief is saying. I get it.

                  We can start out with my hypo because that is the first part of the sentence.

                  Plus, the comma before the “and” indicates that —YES–there are two separate noun phrases. The only reason this is not crystal clear is that “a written description” was not repeated when it should have been. The comma means the noun phrases are different.

                  All the stuff after the “of the manner and process of making and using it” modifies the second noun phrase.

                  I get their game. They are wrong. This is not even close.

                2. Plus, even if we assumed their construction of two separate prepositional phrases that are modifying “a written description”, all of that stuff after “of the manner and process of making and using it” modifies the second prepositional phrase. There is nothing in that sentence that would indicate that the modifiers are going back to only the original noun “a written description.”

                  The sentence diagram for this sentence has all that stuff of the third arrow modifying “of the manner and process of making and using it.”

                  Frankly, anon, there analysis is ridiculous. And I will bet that the clerks at the SCOTUS will see it the same way I do.

                  There only hope is that the justices just don’t like the test the CAFC made up for “a written description of the invention.”

                3. (their and not there above).

                  And just one last thing. That basic sentence is what the whole thing is about. Any grammatical analysis starts with the basic sentence form. (There are only 10 in English.) That is how you analyze sentences. That is how the experts do it in graduate classes.

                4. can start out with my hypo because that is the first part of the sentence.

                  No, we cannot – for the reason already given.

                  As to “There is nothing in that sentence that would indicate that the modifiers are going back to only the original noun “a written description.” – your treatment of commas is off – as I have pointed to numerous times now. You are the one demanding a break; how is it that you then ignore the break and want to apply the participle phrase to only the second half of the “of” phrases?

                  You have stated – without stating why – that only the second of three “noun phrases” is treated with the identified third noun phrase. It is NOT an assumption that there are two “of” prepositional phrases – not sure why you would phrase it that way.

                  This goes against your very own setup.

                  As to the basic set-up; you continue to be wrong. You are force-feeding a partial context view. You have to apply a full context view or apply a strict “noun-phrase” view and in both of those cases, you simply cannot arrive at what I have labeled as the third prepositional phrase (the participle phrase) ONLY modifying the second prepositional phrase (what you want to call the second ‘noun phrase.’)

                  As to “start with the basic sentence,” I agree. But your hypo attempt above violates that notion of basic with your attempt to slide the first half of the “what” prepositional phrases (the first ‘of’) into the basic.

                  That’s a clear error. The basic is the noun itself, and you have no justification for proceeding by attempting to classify the two halves of the “what” (the two ‘ofs’) differently.


              That did not come out as intended – I intended instead to draw your attention (as I have posted several times now) to the prepositional phrase portions of the noun phrases.

              You keep on saying “noun phrases” as if that were enough for the understanding and deployment of the syntax, and such is just not true: you really do need to take the context of each of the phrases into consideration.

              You have yet to do so.

      2. 12.3.2

        Additionally – as I have noted – there is more here than your supposed “merely left off the second ‘written description.” The fact (put to you below) of the extra comma after the second half of the “whats” prepositional phrase dictates that your attempted construction is off.


          A first comment snagged in the “count filter,” but here is an additional (reinforcing) comment as to your “noun phrase only” approach:

          If we strictly take your approach, and do not take into consideration the context of the prepositional phrases (and more accurately the participle phrase which I have been calling the third prepositional phrase), your own provided construction rules (per the comma after the second “what” phrase) demands that THAT third phrase is its own noun phrase and the “how” compounded phrase should not apply to EITHER of the first two “noun phrases” (either of the two halves of the “what” phrases). There is no grammatical way to arrive at your desired takeaway of the third phrase ONLY describing the second phrase per your own rules.

    4. 12.4

      “The “invention” is what is in the claim (that has, or will, issue).”

      Nah that’s just the “claimed invention”. We already settled this in our vernacular, you britbongs always have to follow our leadership. In everything.

      1. 12.4.1


        That you refuse to accept the plain meaning of what Congress wrote does not mean “settled,” 6.

        I know that you like to deride the focus on claims as some sort of C ult of Claims thing, but your view of what the invention is remains untethered to the law as written by Congress. Just a quick reminder: you, as a member of the administrative agency of the Executive Branch are charged with exe cuting the law – NOT deciding what the law is that is to be exe cuted.

  14. 11

    The ‘written description’ requirement was created by the ‘results oriented/ activist CAFC that created law – to shutdown so called submarines and ‘late claiming.’ After the statutory ‘reforms’ publishing patent application in 18 months and changing the patent term from 18 years from issue to 20 year from priority there is really no longer a need for the ‘written description’/ late claiming body of law. The statute remedied the ‘problem.’ SCOTUS will screw this up too. Patents + SCOTUS = screw up. — The late great Justice Renquist had it right. My guess, since ‘written description’ is yet another anti-inventor/anti-patent legal theory, SCOTUS will affirm and turbo charge it.

    1. 11.1

      A “need” to exclude “late claiming” (of an invention not announced in the application as filed) is essential in any First to File patent jurisdiction. Otherwise, the party B which was first to file on invention X gets busted by another, A, who filed earlier on invention W, but then, during prosecution, after seeing B’s 18 month PTO publication, introduces a claim to invention X, unforeseen by A when A filed. Let such claims in, and the result is that A gets exclusive rights in X even though he wasn’t “first to file” on X.

      We live now in times where rival concerns file on much the same subject matter at much the same date. We need very strict rules about priority in co-pending patent applications, to resolve “who gets what”. Otherwise chaos. Which is what some litigators want, of course.

      1. 11.1.1

        Your “need” – even if admitted to – does not move the discussion forward as to how properly to construe 112.

        In other words, your view here only kicks up dust.

        Each and any of the proscribed constructions of 112 are fully intended to meet the need. But only one can rule. That is the point here that you appear not to be able to see.

      2. 11.1.2

        Happens everytime you ‘copy’ a claim to provoke and an interference. Has little to do with first to file.


          Interferences are of course dying as most applications and many patents are now under the AIA. Copying claims from a patent or published application of another that were not suggested to be an invention in one’s own application made interference decisions a major source of the “possession of the invention” case law .

  15. 10

    (a) IN GENERAL.—

    The specification shall contain a written description of the invention>>,<<

    and [a written description] 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 or joint inventor of carrying out the invention.

    I am not sure what you are talking about a modern grammar analysis. I think it is pretty clear there are three requirements there by modern grammar. The comma indicates a new subject. The problem is that this is a list of three things, but there are so many commas in the second thing that the writer decided to add an extra and. Plus the writer left off the second "a written description" probably because it was so close to the first "written description". This would be OK if it weren't for all the complexity later in the sentence.

    Anyway–what? There are clearly three separate requirements in this sentence.

    1. 10.1

      How does anyone get one thing out of “a written description, and”? There is the written description “and” something else.

      And, then we get another “and” later on for the third thing.

      Seriously people.

      1. 10.1.1

        I see 4 requirements

        A written description of
        1. the invention;
        2. how to make the invention;
        3. how to use the invention;
        4. the specification as a whole must describe the best “mode” to carry out the invention.
        Ok, if the requirement for a written description wasn’t clear enough, oh, by the way, the written description must be 5. full, 6. clear, 7. concise and be in 8. exact terms.

        So, I guess I see from 3 to 15 requirements or at exactly about 8 requirements.


          There are three noun phrases some of which have more than one requirement.

          But the sentence has three noun phrases.


          I did read the relevant part anon. Plus I’ve had a boatload of grammar classes.

          Their argument is basically that the third arrow modifies the noun phrase “a written description.” And not the noun phrase “of the manner ..”.

          They are wrong. The reason they are wrong is that comma before the and. That is signaling a new subject. The only reason it is somewhat ambiguous is that “a written description” should have been repeated.

          But, there is no way to make complete sense out of the grammar of that sentence. There should have been a semicolon before the second and.

          I will say that it is a judge made test for the first phrase “a written description.” Because of that and the fact that the SCOTUS just loves overturning the CAFC, it might have an outside shot.


            Your construction cannot be correct.

            What you have here is a series of three prepositional phrases, with that series of phrases having the nature of two distinct attributes and the third phrase being a compound phrase in and of itself.

            I think that you have “boxed yourself in” from the grammar angle by not realizing the content of the prepositional phrases need to be taken into account (as I pointed out previously, you have two “what’s” that are paired, but then you have the compounded “how.” It simply makes no sense whatsoever to pretend that the compounded “how” is geared to only half of the “whats” and that the other half is provided NO statutory basis as to the “how.”

            I suggest that you have not read enough of the brief.

            Read the part that discusses the take that you want to have: that the third prepositional phrase is ONLY geared to one of two of the “of” phrases.

            The brief is dead-on accurate on this point. Where it lags is in providing a meaningful “out” to the Court that will merely adhere to its own past views.

            Further – and separately to Paul, (and apologies for “crossing streams,” but the “count filter” has kicked in), the notion of “backfire” is completely misguided as the brief explicitly calls out FOR the item that Paul offers as a backfire (in at least three different places).

            The larger point of the brief (and one not being captured yet here in the comments) is that the nature of the “possession” test is simply not moored to the actual text of the statute.

            The earlier case and its “tie” to possession has been (judicially) stretched beyond reason.

            Make no mistake, there is reason for having a possession requirement – but that’s a distraction to the legal issue being attempted to be made.

            Read the brief again.

            Consider this as a statement of the issue:

            Is it permissible to take a legislative statute and read it in such a way so as to create a mixed breed of how the statute may be applied? The point being attempted to be made is that the judicial reading severes the two “whats” in a manner that creates two different conditions for the “single specification.” One of those conditions then is provided a legislative “how.” But the other is provided nothing as to its “how.”

            In the (forcibly) created vacuum, the brief points out (imho, they do not do this part too well) the “on-the-fly” court-created “hows” violate the Supreme Court’s admonition against reading into the statutory law conditions not present.

            As I pointed out elsewhere, this is a difficult path to take given that the Court (on its own) is simply not likely to eat crow and admit that it too has overread the plain words.

            Another way of putting this is that the “possession” requirement needs to be dialed back to the same “how” – the ONLY present “how,” and that the various court-made possession tests that may implicate any different “how” are improper.

            I think that the brief stumbles on this point a bit, but they try to point out that these sui generis “how” (judicial branch statutory law writing) provisions are not in accord with the actual only “how” provided by Congress. I think that they do not do this well because they tiptoe into an area that needs a lot more “setting” of context, or at least a more thorough contrasting from the court-created “how” to the (only statutory provided) “how.” They end up merely “hinting” at something that needs a more complete explication.


                It is not the noun phrases that you should be focusing upon – it is the prepositional phrases that are key.

                Note (again) that you have prepositional phrases that are serving different purposes and you must take the context of those purposes into consideration for your grammatical constructions.

                1. Let me add one more thing: the argument (not yours, but the current court understanding) is that the “what” of the “of” prepositional phrases IS split and that ONLY the second half of the “whats” carries with it the (legislative) “how” prepositional phrase.

                  And yet, there is a comma separating the second half of the “what” from the “how.”

                  IF the current court version were correct, that extra comma should absolutely not be there.

                  It is ONLY without a comma after the second “what” in series should the next prepositional phrase apply ONLY to the second “what” prepositional phrase.

                  As I pointed out – it is the prepositional phrases – and the context of those phrases (two “whats,” and a compounded “how”) that clearly explicates the words of Congress without (artificially) creating a legal vacuum for the judicial branch to step in.

  16. 9

    It would seem that the current statute as written is clear and concise such as there would be no reason to infer an intent to require separate written description and enable me to requirements. If it concisely and clearly makes a statement, why should we look further (to history) to clarify what is already clear? If the statute is clear and concise, what other language should they have used to convey what it clearly and obviously says?

    1. 9.1

      The problem Peter (and Prof Crouch notes this), is that the Court has long taken the existing words (same as the prior words), TO SAY more than what the plain meaning of the words indicate.

      In truth, there is no “hook” for a possession test per se, but that – alone – is just not enough.

      To effect a change in what the Court (wants to have been written instead of the actual words) “sees,” they will want some indication that Congress made a change that will allow the Court to “see” differently.

      Being as there is no such change, and being that it would take substantial humility from the Court to admit that it had (in the past) read TOO MUCH into the words, the Court here simply will not change the status quo.

      But your point is a good one in that IF Congress did want to change to an “only enablement and not possession” type of reading, what words would they use? The answer of “they would use the same words” may make perfect sense from a straight forward “words mean what they say” position, but I suspect that Congress would have to make a change with h affirmatively denying a possession requirement in order to reach any “plain meaning” understanding.


          The issue of “more wrinkles” is reflected in the brief, Joachim.

          All of these “more wrinkles” are ultra vires to the actual words of Congress and the single “how” prepositional phrase, based on the argued “don’t split the ‘whats’” construction.

          I am curious as to how you would do the construction based on context of the prepositional phrases.


            I probably should have commented earlier because I was considered an excellent copy-editor once upon a time.

            I have been somewhat overloaded (1) because I have been busy with trying to become a country lawyer as painlessly, inexpensively, and quickly as possible and (2) because I have been trying to put together a response to the “Request for Comments on the Standard for When a Claim Element is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility”. I have not had the time to respond to this blog in detail.

            American laws frequently have hideous syntax and horrible punctuation. The crap starts with the Constitution.

            2nd Amendment: A well regulated Militia, being necessary to the security of a free State, the right of the people to keep and bear Arms, shall not be infringed.

            The nominative absolute is mispunctuated even by 18th century standards, and the 2nd comma makes no sense.

            35 U.S. Code § 112 (a) has practically unparsable syntax and combines at least four different systems of punctuation: British punctuation, USPTO puntuation, 19th century impressionistic punctuation, mid-twentieth century semisystematic punctuation, and standard newspaper punctuation.

            To deal with this sort of spaghetti, I start out with a minimum meaningful sane sentence skeleton and then work all the modiers back into the sentence.

            The specification shall contain a written description … in … terms as to enable any person … to make and use the [invention], and shall set forth the best mode ….

            {I temporary replaced “same” by “invention.” By modern punctuation standard the sole comma in the skeleton is unnecessary, but USPTO punctuation often with fairly good reason uses extra commas and semicolons. The phrase “as to enable” is an awkward substitute for “that enables.” When we analyze the skeleton sentence, we notice that the complex prepositional phrase “in … terms as to enable any person … to make and use the [invention]” can either be an adjectival prepositional phrase modifying “a written description” or an adverbial prepositional phrase modifying “shall contain.” Before the 60s the adverbial usage was indicated by a preceding comma. When I start adding modifiers back into the sentence, we will find the comma that flags an adverbial prepositional phrase. Next I add back the easy stuff.}

            The specification shall contain a written description … in such full, clear, concise, and exact terms as to enable any person … to make and use the [invention], and shall set forth the best mode ….

            {That insertion is probably the only one that requires practically no discussion besides noting that the commas are correct according to current American punctuation standards but not by British standards. Onward to the next insertion.}

            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 … to make and use the same, and shall set forth the best mode ….

            {How do we interpret this insertion? The first comma belongs to USPTO punctuation style. We patent prosecutors can consider

            of the invention, and
            of the manner and process of making and using it,

            to be equivalent the following patentese expression.

            the invention, and
            the manner and process of making and using said invention,

            Note that “[invention]” can now be replaced with “same.” Note the comma following invention with some semantic analysis tips us off that “in such full, clear, concise, and exact terms as to enable any person … to make and use the [invention]” probably is adverbial. It is impossible to say for sure because the sentence is becoming ever more hideously structured syntactically. Onward to the next insertion.}

            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 ….

            {The inserted phrase

            skilled in the art to which it pertains, or with which it is most nearly connected,

            is participial. The recitation of relative clauses is non-restrictive, but for some reason a combination of British and USPTO punctuation is being used. The final comma indicates that the infinitive phrase “to make and use the same” is a complex infinitive verbal object of “enable” and not used adverbially to modify “connected.” Now for the final insertion, which fortunately is not too important because the best mode requirement is vestigial nowadays.}

            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 or joint inventor of carrying out the invention.

            {This insertion represents something particularly hideos and something that I never want to see in a statute of law. The phrase “of carrying out the invention” is an adjectival preposition phrase, in which the object of the preposition is a gerund phrase. That grammatical structure is acceptable, but what is “contemplated by the inventor or joint inventor?” It looks like an participial phrase somehow in parallel with “of carrying out the invention,” but the participial phrase is actually a parenthetical, which should be set off by em-dashes. In this case, the participial phrase really means “in the opinion of the inventor or joint inventor.”}


            Yet § 112 (a) really does seem to have 3 separate requirements according to the usage of the prepositional phrases:

            (1) written description sufficiency, clarity, conciseness, and exactitude, which are matters of fact;

            (2) written description fulfillment-of-enablement requirement, which is a matter of law based and is dependent on factual determination; and

            (3) written description demonstration of possession, which is a matter of fact.


              I think I followed your explication (thank you, but the way – it is not lost in me that you depended on the context of the phrases, even as you were much more exacting in describing them). That is, I followed your reasoning up until your conclusion. Where did you draw the “demonstrate possession” conclusion from? What happened to the “in the opinion of the inventor” portion? (Perhaps left out due to the vestigial – at least for enforcement purposes – part)


                Oh well. I have a tendency to forget the punchline, but now I can add the mapping.

                Doesn’t the following prepositional phrase specify the requirement of sufficiency, clarity, conciseness, and exactitude?

                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

                The other two preposition phrases specify the possession and enablement requirements because comprising is synonymous with including, having, possessing, or characterized by.

                Thus the prepositional phrase of the invention specifies the possession requirement while the prepositional phrase of the manner and process of making and using it specifies the enablement requirement.

                The statute does not tell us which requirement is a matter of law and which is matter of fact to be determined by a jury.

                I suppose SCOTUS and the CAFC have concluded that enablement requires a technical evaluation beyond ordinary jurors. I rather wish that the justices and judges had rather more technical competence and more feel for the obvious.

                I doubt that most ordinary jurors would have concluded that letters patent represent a public franchise or natural monopoly after the jury received a definition of public franchise/natural monopoly.

                1. Doesn’t the following prepositional phrase specify the requirement of sufficiency, clarity, conciseness, and exactitude?

                  Sure it does. The question is not whether the prepositional phrase does so, but instead is how is that prepositional phrase tied to the rest of 35 USC 112(a).

                  I suppose SCOTUS and the CAFC have concluded that enablement requires a technical evaluation beyond ordinary jurors.

                  ? Where, how, and on what legal basis does this supposition come from?

                  I doubt that most ordinary jurors would have concluded that letters patent represent a public franchise or natural monopoly after the jury received a definition of public franchise/natural monopoly.

                  I doubt not doubt your view on this point, albeit this point is not tethered to the current discussion.

                2. I just noticed as well that you are not consistently treating the two “of” phrases; if you want “possession” to be a necessary hook from your “comprises” language, you need to treat all the things that follow the ‘comprises’ equally. Therefore, you would have to say that you have possession of a description and possession of an enablement; as opposed to a first “of” being a possession and the second “of” being something other than a possession.

                  As you noted, the language is horrific. Which is also why I applied Night Writer’s rule set and went for simple and direct sentences instead of the multi-compounded sentence. Apparently he did not like the results of his own stated rules, but cannot tell me why (specifically).


              Joachim Martillo, all the stuff of the third arrow modifies the second “of”.


                …because Night Writer says so.

                Never mind the facts presented (his “hard break after a comma and his wanting to focus on noun phrases instead of prepositional phrases and his not wanting to take the context of each and every prepositional phrase into consideration says the exact opposite.

                Maybe he will actually explain why (and grammatically how) the third phrase after a hard comma somehow reaches back to – and only to – the second half of the pair of “of” prepositional phrases.

                At this point, I am starting to doubt that he could do so. After all, with his extensive schooling, one would think that an explanation would have been forthcoming after the first time I asked.

      1. 9.1.2

        I think you;re spot on with the issue of the court’s issue with humility.

        Maybe they should learn the humility to follow canons of statutory construction rather than to make them up as they go.

        “Where the language of a statute is plain and unambiguous, courts give effect to the statute as written, without engaging in statutory construction.”

  17. 8

    I think the third arrow should point to “of the manner and process.”

    Also I think the written description is good to have. What it does it not permit amendments that would be within the scope of any person skilled in the art to be added to the claims without it being described in the spec.

    Do you guys get that? Probably this is going to cause problems because the anti-patent Google judges have been trying to remove the person skilled in the art.

    Wake up, exercise, shower, read an opinion by Taranto. Re-shower.

    1. 8.2

      It would be interesting to see Joachim’s linguistic treatment of the words of Congress here.

      Personally, the two “of” phrases as separate from the “in such” phrase. The “of” phrases speak to the “what” while the “in such” speaks to the “how” and the additional “to enable” and “to which it pertains” sub-speak to the “how,” by providing “why” and “whom” indicators.

  18. 7

    Interesting. Paul Morgan and 6 are on to it.

    A First to File system is undermined when amendments made during prosecution improve Applicant’s position relative to the state of the art. Some sort of test is needed, to refuse claims to an invention not announced in the application as filed and not supported on that filing date by an enabling disclosure commensurate with that specific subject matter.

    Broadly, what the EPC calls “no added matter” the USA calls “possession” under the rubric of “written description”. Every jurisdiction needs some mechanism to stop Applicants shifting, during prosecution, to an invention that was not announced, as such, in their application, on its filing date.

    1. 7.1

      To a certain degree, applicant shifting has nothing to do with added matter.

      The issue here is NOT added matter per se or as such.

      Unsurprisingly, the resident EP-Uber-Alles mouthpiece seeks to proselytize and misses the finer points.

      I “get” the Euro-desire of ipsis verbis, but one simply cannot ignore the reality of pushback to the patent profanity created by the courts in such ipsis verbis attempts such as to make the mere phrase “the invention is” so draconianly penalized that specification writers simply omit the phrase entirely.

      Also, it is rather unsurprising that MaxDrei lauds Paul and 6, but chooses to clench tight his eyes to the counter points already on the board. He has chosen to not address these points in conversations past, and apparently cannot address them now (still). To wit, the easy, concise, full, exact (even as it is broad) boilerplate that pre-empts the point offered by Paul is not recognized by Malcolm in his eagerness to share what the EP does.

      1. 7.1.2

        Anon, are you seriously proposing a return to adding a 19th Century “omnibus” claim, or a spec equivalent, to an application as filed, and then asserting that as an adequate 112 “description of the invention” for any number of combinations of independent spec features that one might at any time later on decide to combine into claims?


          You have been away from prosecution far too long – and it shows (this is not something I started)


            an additional comment to the “I did not start this”…

            Not only is it reality that such language is in patent applications (and nearly universally so), but it borders on malpractice to NOT have such language present.

            Further yet, you mispeak by attemtpting to draw a parallel to omnibus claiming. This has nothing (directly) to do with claims. This is a specification writing item that provides that any claims during prosecution may be properly tied to legal requirements.

            As such – and given the relative upsides and absence of downsides, not including the phrase based on some (unidentified) personal notion that such a clear, ultra-concise, exact (even if also ultra-broad) tactic is somehow “unsavory” would be the epitome of malpractice by not choosing a fully proper and client-advantageous step based on (heretofor unsubstantiated) personal views.

            Tell me with a straight face that this proper legal step that provides protection to your client is something that you would choose not to do.

            The only caveat I would add is that like any other boilerplate, there may arise particular conditions in which the boilerplate is not appropriate. But this caveat applies to ALL boilerplate, and NO boilerplate should be used without consideration of whether that boilerplate is appropriate for the given situation.

  19. 6

    There is an interesting twist to this for ignorant opinions of those like Taranto. Taranto’s basic theme is that all information processing is per se obvious. He has held as such.

    So what Ben is saying is actually interesting. You could claim a generic computer like Lemelson did that did processing on all the possible inputs and had outputs and controls for everything you could image. Then that one application according to Taranto would disclose all information processing for eternity. Say for example claim a Turing Machine and according to Taranto you are done.

    You can tell that Taranto has an intellectually bankrupt framework because it breaks under almost all circumstances except the narrow purpose for which Taranto has devised it that is to burn down the patent system.

  20. 5

    Wait for Kavanaugh to get on SCOTUS. He doesn’t believe in stare decisis.

    He will take his marching orders from Trump, who takes them from Putin
    (just like MM).

      1. 5.1.1

        Again, anon, relevant to patent law. The SCOTUS is currently making the laws for patents.

        So the composition of the royal wan ker nine is important.

    1. 5.2

      Destroying the patent system would be fine by Putin but US courts are already doing a fine job of that.

  21. 4

    In a world with no Written Description requirement, what’s to stop me from disclosing a computer, and upon seeing a computer improvement enabled as of my filing date, claim that improvement as the “first” inventor?

    1. 4.1

      If you disclose a computer AND the computer improvement (how do YOU enable something without disclosing it?), what is the issue?

      Not sure your question reflects the issue here. If anything, your question strengthens the case being attempted.

      1. 4.1.1

        “how do YOU enable something without disclosing it?”

        You disclosed a computer and the high skill in the art fills in the remaining blanks.


            …nor disclosing the advance (as you postulated – in the “combination” effect of how you wrote your initial comment).

            I think I “get” what you want to say, but what you are actually saying isn’t there.


              I said the later improvement was enabled as of the filing date. I did not suggest that the application disclosed the later improvement.


                Which – as I pointed out – is a “fail” given that one cannot enable that which was does not disclose.

                You still miss in what you are saying.

                As I indicate, you should spend a little more time with the Inherency Doctrine to understand why.

                As it is, you appear to want enablement being something inherent, but somehow excluding disclosure from being likewise inherent.

                You cannot have that bifurcation.

    2. 4.2

      I am amused though Ben by how close your attempted point here is to the Inherency Doctrine.

      I would bet that if you sharpened up your thought process and compose your view with some additional contemplation, that you would come even closer to my stated positions on how the Inherency Doctrine is the proper patent vehicle for dealing with the underlying issue.

    3. 4.3

      If before the day of your application the reference was available to the public, you could try to claim an obvious invention. But I don’t recall 103 being repealed. If the reference were published after the filing date of your application and the combination not obvious, then you could not reasonably say you enabled PHOSITA at the time of your invention.

    4. 4.4

      My statement about 103 was a mis-statement. What I meant to say is that if a new computer is invented and a new computer improvement is invented by another, then if the improvement antedated the new computer and PHOSITA would have understood as obvious to incorporate the improvement, then the inventor of the new computer (who is at least also a PHOSITA) would have had possession of his new computer with the improvement, thereby rendering a separate written description test, moot. If the improvement (novel and non-obvious) were disclosed after the new computer was disclosed then it would be unreasonable to say PHOSITA would have known how to make and use the invention with the improvement, making a separate possession requirement to establish written description moot. If PHOSITA would not have found it obvious to include the improvement at the time the new computer was disclosed, then PHOSITA would not have included the improvement and the disclosure of the new computer would not have enabled PHOSITA to make the improvement, thus making separate possession showing moot. Separate written description test is redundant.

  22. 3

    Even if I could see how this semantic argument made sense, it avoids the practical issue. Which is whether listing a bunch of enabled parts or chemicals in the spec allows any combination of any of them to be later claimed as the invention, even if that combination was not originally claimed or described?

    Might their cert argument even backfire? They do not really seem to deny that there is an apparent requirement in 112 for both a written description of the invention and an enablement of the invention. But they argue that “Insofar as the “written description”addresses “the invention,” the Federal Circuit holds that the statutory “full, clear, concise, and exact” standard does not apply.” What if the Supremes would hold that this should be fixed by also requiring a “full, clear, concise, and exact” description of the invention in an original claim or the specification?

    The part of 112 in dispute here was not changed by the AIA.

    1. 3.1


      There is nothing — absolutely nothing — in the statute that would preclude a test for “enablement” which includes a test identical to what we now call the “written description requirement.”

      My advice to the people peddling this silliness: open up the window and let some fresh air in.

      1. 3.1.1

        Um ok so anything the statute doesn’t preclude a court can ADD? Last I checked that isn’t how statutes are supposed to work. The court does not ADD things to a statute that are not their. Sure it may not be precluded by the statute but if it is not IN the statute then the court shouldn’t require it. The statute sets the floor AND the ceiling.


          He purports to be an attorney, and yet does not understand strict statutory law.

          And that’s not even considering the nature of patent law which is explicitly set forth as belonging only to the Legislative branch.

          As I have noted, the legislative branch may – at its discretion and in accordance with well known principles (including clarity of intent and limits as applicable) – choose to share its law writing power. In the patent world, a clear example may be found at 35 USC 283.

          Other sections of the statutory law (here, for example, 35 USC 112) have no such indication.

    2. 3.2

      Considering this part of your statement: “whether listing a bunch of enabled parts or chemicals in the spec allows any combination of any of them to be later claimed as the invention, even if that combination was not originally claimed or described?”…

      Would not a simple “explanation” (in the body of the specification) to the effect of: we have provided a number of embodiments and it is to be understood that the innovation may be comprised of any number of combination of the disclosed features – effectively nullify your question?

      Such a statement is ultra-concise. It is full, clear and exact. While it is also ultra-broad, one must remember that breadth is not indefinitness. Such a statement IS an original description of combinations.

      One should also reflect that (by now), such a “saving grace” type of statement is effectively boilerplate in patent applications.

      The point being that wanting to limit an innovation to some ipsis verbis notion is not only an excessive “want,” it is a “want” easily defeated by what should be a standard writing practice.

      This is not to say that a “Gist” of what you say is to be ignored. One cannot file a dictorinary, and with the boilerplate attempt to say that any claim at all is covered because any claim is merely a configuration of words necessarily found in the dictionary. Of course, Rationality arises when one realizes the transition of reading claims is not performed in a vacuum, but in light of a Person Having Ordinary Skill In The Art. Perhaps this is why Malcolm is so upset about the computing arts – which naturally permit far more broad (without being indefinite) renditions of “combine one or more features disclosed.”

      1. 3.2.1

        I note here as well that HAD such language been used in the underlying Schriber-Schroth Co. v. Cleveland Trust Co case that “possession” as that term is being used may well have been found to exist. The problem in Schriber-Schroth was the absence of such language and the presence of the opposite: a stressing of one particular feature only.

        As I have noted, by now this type of “flexibility” [pun intended] is pretty much standard to any decent patent writing (and may even constitute malpractice in its absence).

  23. 2

    OT, but

    link to

    The problem is that Sotomayor is one of the barbarians thinking she can just do whatever as a SCOTUS. There is more violence in her opinions than in Chicago.

    I wish people like Sotomayor could see her role in the barbarism.

    1. 2.1

      I don’t understand your comment NWPA. Seems like she is speaking out against the execution isn’t she? Why are you upset about this? Or are you referring to her patent opinions?

      Firing squad is the answer to the barbarism problem btw. All these “muh drugs” were proposed by liberals back in the day as supposedly being the good option iirc.

    2. 2.2

      This too should go.

      …or the prof should seriously consider changing the blog title and byline.

      1. 2.2.1

        Not really anon. This actually affects patent law. Sotomayor is an ignorant arrogant justice that thinks if she feels something should be that she will write an opinion or join an opinion for such.

        The zeitgeist of barbarism is the same as Alice. That the justices don’t care about the Constitution or people’s settled expectations and huge investments based on those expectations.

        What we are seeing in patent law is just another aspect of the barbarism and the great irony is one of the worst offenders is Sotomayor. The justices just feel that patents need to be weakened because the briefs say so. Plus just look at Oil States. Sotomayor signed on to an opinion that was based on a journal articles whose assertions were contested by two other justices. Plus Sotomayor thinks nothing of making laws when that is not her job. Etc.

        The worst barbarism in the USA right now is right in the SCOTUS that pretends it doesn’t have a lot of power, but, in fact, has enormous power. This is highly relevant to patent law.


          “The zeitgeist of barbarism”

          We diverse now bruh, that was your boomer dream, now you’re living it. Stop being so big oted, make way for the new values. No more ev il white cis hetero christian capitalist democratic patriarchial nonsense for u!

          “That the justices don’t care about the Constitution”

          Why on earth would non-ev il white cis hetero christian capitalist democratic patriarchial people care about that old ev il white cis hetero christian capitalist democratic patriarchial OPPRESSIVE document that is oppressing their fellows and supports white supremacy? They have to stop the oppression by evil people like you bruh, and to do that they must obviously do away with nonsense like “muh constitution” and arguments like “muh constitution”.

          ^That’s leftism 101.

          “What we are seeing in patent law is just another aspect of the barbarism ”

          And its name is: leftism.

          “The worst barbarism in the USA right now is right in the SCOTUS that pretends it doesn’t have a lot of power”

          I think at least the notorious RBG knows, and she doesn’t pretend that she doesn’t have a lot of power. 50 milly babies de ad/never “alive” at their command is a pretty big amount of power, and that’s just starters.

  24. 1

    Considering the new way that the AIA drafters wrote the thing it may well now actually mean that. I haven’t looked it over, but if they didn’t mean to change the substance then it doesn’t actually mean that. Congress should have clarified this in the AIA just to put this canard to bed forever.

    You can’t bring new matter in. You had to actually describe the invention as of the date of filing. Why is this so hard?

    1. 1.1

      I am trying to reconcile your post with this “new way the AIA drafters wrote the thing” with Paul’s comment above about the issue here under 112 being something NOT changed in the AIA…

      Did you have something specific in mind, 6?

      1. 1.1.1

        Funny I’m trying to join his comment about it may say this with his comment but if they didn’t mean to say that it doesn’t say that. Law is about what is on the page, what is written. If you don’t write what you mean than you need to rewrite it and it isn’t for a court to try and guess what you meant and rewrite it for you.


          Re: “..if they didn’t mean to say that it doesn’t say that. Law is about what is on the page, what is written.”
          The subject language here is from the 1952 patent statute which was presented and adopted by Congress as a codification of existing patent case law, and replaced prior patent statutes.
          Judicial interpretation of statutes goes on all the time at appellate levels. It has to, since unintential ambiguous statute writing by legislators also goes on all the time. Sometimes there is even deliberately ambiguous statute writing. For example, the AIA leaving application and patent disclosure of the “best mode” as a binding requirement in 35 USC 112, but adding legislation removing that as a defense.


            I am not sure that “ambiguous” is the correct word for the AIA best mode defense removal.


              So what are now the legal or disciplinary consequences for an inventor, patent application drafter or application prosecutor who leaves out what they or one of the inventors considered to be the “best mode” at the time of filing?



                (that was easy)

                Get past the examiner during prosecution and you are scott free. Of course, you still have to be able to do that part, since the rescission was merely the post grant defense portion.


                “So what are now the legal or disciplinary consequences for an inventor, patent application drafter or application prosecutor who leaves out what they or one of the inventors considered to be the “best mode” at the time of filing?”

                If the office finds out pre-issue then they issue a best mode rejection.


          “Law is about what is on the page, what is written.”

          That’s not always how they interpretate the laws tho.

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