Enablement at the USPTO

by Dennis Crouch

I was reading recent PTAB ex parte cases looking to see how the Office is handling enablement questions. The first three cases I read all involved the same setup: The examiner made a rejection that that the PTAB suggests might have been better suited as an enablement rejection. For example, in Ex Parte Sugimoto (PTAB 2022), the PTAB explained that “the Examiner conflates enablement with indefiniteness.”  The PTAB then noted similar sentiment in Ex parte Nunes (PTAB 2022).  In Nunes, the examiner had rejected the drone-aircraft claims as indefinite based upon the specification’s failure to define how the thrusters compensated for wind gusts. On appeal, the PTAB concluded that the rejection would have been better suited as an enablement rejection:

[T]he Examiner’s concerns relate more to whether Appellant has made an enabling disclosure of the described functionality, as opposed to whether the recited functionality is indefinite. The claim is clear as to the structure required by the claim (e.g., a plurality of shrouded laterally oriented thrusters) and the functionality required by the claim (e.g., compensate for gusts of wind and force a descent).

Id. I’ll note that in Nunes, the PTAB affirmed the indefiniteness rejection on other grounds. In particular, the claims required “precise” positioning but the specification did not include “standard for measuring” the degree of precision.

Finally, in Ex parte Kim (Fed. Cir. 2022), the PTAB explained: “To the extent the Examiner’s rejection implicates the enablement requirement of that statute, we decline to speculate in that regard here, for the rejection is based solely on the claimed invention’s failure to comply with the written description requirement, not the enablement requirement which is a separate and distinct requirement under § 112.”  I ran across this same situation later in Ex parte Palmer (PTAB 2022).

I kept reading and came to Ex parte Oda (PTAB 2022). Although that decision mentions enablement, it is in the context of whether the asserted prior art is enabling. In the case, the PTAB concluded that the patent applicant had failed to overcome the presumption that the prior art is ‘enabling.’

On the fifth try, I came upon Ex parte Mersel (PTAB 2022).  The Mersel application discloses methods of treating autoimmune diseases, such as Chron’s disease.  The examiner rejected the claims for lack of enablement after concluding the specification lacked evidence to support the theory that the proffered method (administering β2m) would treat Chron’s disease.   On appeal, the PTAB noted that the claims do not recite treatment of any disease, but rather only recite the cell-level result of “restoring normal heavy chain β2m molar ratio.”  According to the PTAB, the application enables this result by teaching how to deliver the particular peptide to the cell membrane. “There appears to be ample explanation and data in the Specification from which an ordinarily skilled artisan could make and use the invention as claimed.” Id.

I finally came across a seemingly proper enablement rejection in Ex parte Makotoiwai (PTAB 2022).  The case claims a particular “nitride crystal substrate” used in semiconductor manufacturing.  The examiner concluded that the substrate/device “can not be reproduced based upon the disclosure.”  The Board eventually reversed this decision – deciding that the applicant’s arguments were slightly better.

In the end, this was a fairly disappointing reading journey and helps restore my prior thoughts that a separating the written description and enablement requirements has born more confusion than fruit.

61 thoughts on “Enablement at the USPTO

  1. 10

    Anon has made a substantive practical suggestion below with which many of us could heartily agree:
    Many important application examination issues are not appealable, only resolvable by way of petition, yet “..most often, the Office will simply “wait out” the time in which the applicant must act to keep their application from going abandoned” [and thus avoid ever deciding the petitioned issue.] “In order to foster actual quality examination, it would be VERY low hanging fruit for the new Director to set forth an edict that all petitions must be answered in a meaningful time limit.”

    1. 10.1

      I agree the office should do that, but I don’t know if it’s actually low-hanging fruit. Specifically, I have no idea either how many additional FTEs it’d take to implement that policy, or how those addition FTEs could fit in the existing budget. Seems worth doing none the less.

      1. 10.1.1

        How do you envision “FTE’s” being involved?

        We are talking about something that would immediately lead to higher quality – how many “FTE’s” in SAWS-like programs could EASILY be switched over?

        Or are you still in denial on the Office’s admission when it shuttered SAWS?

  2. 9

    As a patent examiner, I regularly made enablement rejections where I analyzed the application based on the In re Wands factors as I was taught in law school. I was told I would be denied overtime and promotion by my boss because the Office did not “like” enablement rejections during the Bush years. I felt the policy of not enforcing 112 by the management of the Office was obstruction of enforcement of the Patent Act so I quit thereby complying with my legal ethics. Another examiner I know filed an Inspector General and GAO complaint against the Office for failure to meet Congressional statutory mandates and the report confirmed my impressions of the Office. However, Bush was torturing innocent people and was not prosecuted. Not enforcing the Patent Act was no big deal for the Bush administration and small potatoes.

    1. 9.2

      The USPTO not following the law? Say it ain’t so, Joe! Say it ain’t so!

      In the design art units, the USPTO is doing its best to ignore the In re SurgiSil decision. Now, we all know that the MPEP itself says the MPEP doesn’t have the force of law and that Examiners should follow substantive law over what the MPEP says. That does not stop USPTO personnel from saying that the MPEP controls and the MPEP still says that the Glavas decision says an anticipatory reference doesn’t have to be analogous.

      1. 9.2.1

        ipguy – is this a “new” observation in your ongoing case, or one that reflects the prior state of your attempt to have the examiner on your case actually reflect on this new “interpretation of the old law” by the judicial decision (as everyone knows, the judicial branch may not write patent law on its own)….?

    2. 9.3

      Did the Examiner Union have your back, or were they complicit?

      1. 9.3.1

        My union rep knew what was going on, but was not surprised. SPEs were arresting examiners they did not like on trumped up charges just like in Russia at the time. The union had its hands full during Bush/Dudas. A lot more dark stuff was going on that eventually wrecked the world economy. SERIOUS STUFF. FYI: the jury foreman personally apologized to the examiner for being charged.

        1. 9.3.1.1

          WOW Jr – and thanks.

          Not to impugn your sharing (which I would rather encourage), I wanted to offer a few comments:

          My union rep knew what was going on, but was not surprised.

          The union had its hands full during Bush/Dudas.

          How exactly were the union’s “hands full?” I ask because if items were in the shadows, NO ONE out here “in the public” can see, and the perception of the examiner’s union takes a beating – and comes across as opposite of the intonation that they were busy trying to be helpful.

          SPEs were arresting examiners they did not like on trumped up charges just like in Russia at the time. A lot more dark stuff was going on that eventually wrecked the world economy. SERIOUS STUFF.

          Those are some seriously dark intonations — but without more, it comes across more than a bit shallow (and actually, it comes across as a rather weak mirror to QAnon type of musings).

          Some explications would help.

          Further, for those of us who have long screamed for a better focus of Congress in regards to examination quality, explications of these “dirty deeds done dirt cheap” on the inside would be abundantly helpful.

          FYI: the jury foreman personally apologized to the examiner for being charged.

          OK – this sounds like a single personal incident, and perhaps has induced an over-reaction, but hey, I am willing to listen to more details.

          1. 9.3.1.1.1

            “but hey, I am willing to listen to more details.”

            He’s obviously making this all up anon.

            1. 9.3.1.1.1.1

              Regrettably, that was my take-away from 9.3.1 as well. Unsubstantiable assertions do not merit credence by default.

            2. 9.3.1.1.1.2

              I wouldn’t put much weight on Jr’s specific account, but it seems like it might be a confused recollection of real events.

              The April-May 2007 edition of POPA NEWS reported on a patent examiner’s acquittal in a trial relating to time charges, and their article ended with:

              “After the verdict, the jury foreman approached the
              defendant to say that he and the jury were sorry
              that the examiner and her family had to go through the trial.”

              1. 9.3.1.1.1.2.1

                Yeah I had remembered that as well and agree with you that he is likely just remembering the public news of the time. Although he’s probably still just a crazy dude larping.

        2. 9.3.1.2

          “SPEs were arresting examiners they did not like on trumped up charges just like in Russia at the time. ”

          What a larp.

    3. 9.4

      As a patent examiner, I regularly made enablement rejections where I analyzed the application based on the In re Wands factors as I was taught in law school. I was told I would be denied overtime and promotion by my boss because the Office did not “like” enablement rejections during the Bush years.

      Thank you for your comment, and God bless you for taking your job seriously, even where your superiors would prefer that you did not. I have, however, a few brief notions to offer in response.

      (1) Even though your experience came during the GWB years, I expect that most of us have seen that disfavor of §112 rejections was not unique to the Bush administration. Regardless of administration, the PTO has always preferred to reject claims on the basis of §§102/103 (with a recent enthusiasm for §101 now in vogue in certain art units).

      (2) I submit that this is actually rational. We speak of “prosecutorial discretion” in the criminal context, but the same dynamic is necessarily a part of every department of government. There are literally limitless amounts of work for every office of government to do, but finite resources with which to do that work. Precisely because the resources to do examination are finite, PTO administration must prioritize how those resources will be used, and examiner time is the most valuable resource in the PTO whose allocation must be optimized.

      (3) If the PTO grants a patent on an invention that does not work, the harm to the public is fairly minimal. No deep commercial markets can be expected to grow up around products that do not work, so such invalid patents are less likely to obstruct legitimate commerce. By contrast, if the PTO grants a patent on something useful that really does belong in the public domain, then legitimate commerce will be obstructed—to the detriment of American consumers. Therefore, when prioritizing the allocation of examiner time and attention, it really is quite rational for the PTO to tell the examiner corps to pay more attention to §§102/103 than to §112. Perfect examination is not possible, so you have to choose which sorts of errors you consider to be more socially tolerable.

      1. 9.4.1

        “If the PTO grants a patent on an invention that does not work, the harm to the public is fairly minimal. No deep commercial markets can be expected to grow up around products that do not work, so such invalid patents are less likely to obstruct legitimate commerce.”

        Of course with functional claiming a claim to a “product which does not work” may well encompass products which do work. Perhaps in a world world required picture claims we wouldn’t need to be worried about enablement, but we don’t live in that world.

        1. 9.4.1.1

          Of course with functional claiming a claim to a “product which does not work” may well encompass products which do work.

          Com’on Man – clearly if a claim encompasses products which do work, the GENESIS of Greg’s point does not apply – and neither does the concern to which Greg seeks to address.

          How can basic logic evade your thinking do very often?

          1. 9.4.1.1.1

            “Com’on Man – clearly if a claim encompasses products which do work, the GENESIS of Greg’s point does not apply – and neither does the concern to which Greg seeks to address.”

            There’s a new thing called “scope of enablement” rejections which are put in place when there are substantial non-enabled embodiments being covered by the claims in order to secure a given claim for the working embs. That is, your claim is not reasonably fully enabled across its full scope. I’m guessing he’s talking about those.

        2. 9.4.1.2

          I am not saying that no harm can possibly accrue from granting a claim that does not comply with §112. My only point is that—balance of probabilities from behind a veil of ignorance—a §§102/103-defective claim is more likely to have pernicious impact on otherwise-lawful commerce than is a §112-defective claim. Therefore, when deciding where to allocate scarce resources, it makes good public-policy sense for the PTO to err on the side of over-enforcing §§102/103 than on over-enforcing §112.

          Obviously, the PTO does put some effort into examining §112 compliance. No one is suggesting that they ignore it entirely. If they encourage the examiner corps to be more invested in §§102/103 enforcement, however, that is probably the right balance to strike.

          I definitely do not want to leave the impression that §112 is not important. I think that the courts should be tougher in their implementation of §112 when adjudicating inter partes patent disputes. The PTO, however, is never going to have the scope of resources-per-patent at its disposal that litigants will have, so the historic practice of leaving §101 & §112 for private enforcement is a sound and sensible approach to examination priorities.

          1. 9.4.1.2.1

            Remember folks – “Efficient Infringement” comes across as a perfectly reasonable item when looked at from a strictly Rational Actor mentality.

            It takes more though to understand such things as Efficient Infringement — and here, Greg’s “Efficient Examination” musings — in light of what the law dictates NOW as well as the undergirding rationale for having an innovation protection system in the first place.

        3. 9.4.1.3

          The sub-prime mortgage patent that split the mortgage note from the security agreement making the mortgage legally unenforceable was not enabled, but it only wrecked the world economy. Not enforcing enablement will not do minimal harm; it will destroy everything in the world economy leaving only a husk of a planet. You obviously never worked in government.

          1. 9.4.1.3.1

            patent number…?

          2. 9.4.1.3.2

            The sub-prime mortgage patent that split the mortgage note from the security agreement making the mortgage legally unenforceable was not enabled, but it only wrecked the world economy.

            It was not the patent that wrecked the economy.

    4. 9.5

      I forgot to add that I had a similar situation when I was an Examiner. I asked my SPE why we were not including skill level determination as part of our obviousness rejections, as I had been taught in law school that the determination of the ordinary level of skill in the art was part of the Graham obviousness analysis. His response was that we do it “implicitly”, without any further explanation, and indicated that was the end of the conservation about skill level determination. That was over 25 years ago, and nothing has changed at the USPTO. Someone at the USPTO decided a long time ago (likely some time between the Graham decision and the early 1980s) that Examiners were not going to explicitly determine the level of skill (probably to eliminate one basis for reversing an obviousness determination).
      Ask Examiner to answer the question they have never been taught to answer: “How did you determine that a particular reference reflected an appropriate level of skill in the art?”

      1. 9.5.1

        It can be fairly said that every Office Action by any examiner to which the factual development under the Graham Factors is NOT presented does not rise to a proper rejection under a prima facie showing.

        While I have used this argument (typically as a secondary argument – as I can often make a stronger showing that the cited references do not establish a proper rejection based on content), this is nonetheless a valid manner of forcing examiners to actually examine properly.

        At least it would be, were the Office to put any semblance of teeth into its petition process. Improper finality (to which this argument goes to) is not an appealable matter, but is only resolvable by way of petition. Sadly, there is NO holding the Office’s feet to the fire on timing of petitions, and most often, the Office will simply “wait out” the time and our clients end up having to respond in order to keep their application from going abandoned.

        In order to foster actual quality examination, it would be VERY low hanging fruit for the new Director to set forth an edict that all petitions must be answered in a meaningful time limit.

        1. 9.5.1.1

          “In order to foster actual quality examination, it would be VERY low hanging fruit for the new Director to set forth an edict that all petitions must be answered in a meaningful time limit.”

          Amen. And by “meaningful”, how about at least a week before the end of the 6 month statutory period when the petition has been filed within the first two months of the shortened statutory period.

    5. 9.6

      Imagine quitting your job over lolenablement rejections (which you saw like 1 of in your whole limited career I’m guessing). lelz.

      But yes, that is small taters compared to the torture etc. Which I bet continues to this day in even more black site ops.

      1. 9.6.1

        ?

  3. 8

    “restore my prior thoughts that a separating the written description and enablement requirements has born more confusion than fruit.”

    Was the motivation behind that separation to streamline the system or to recognize the requirements of the statute? If it’s the latter, the quantity of fruit produced seems irrelevant.

    1. 8.1

      Excellent question and excellent point. I think that most scholars trace the origin of “written description” as a separate requirement in §112(a) to In re Ruschig, 379 F.2d 990, 995 (C.C.P.A. 1967) (“Appellants refer to 35 U.S.C. §112 as the presumed basis for this rejection and emphasize language therein about enabling one skilled in the art to make the invention… If [the rejection is] based on [§]112, it is on the requirement thereof that ‘The specification shall contain a written description of the invention…'”).

      Note that the court appears a bit ambivalent about whether the rejection finds statutory support for the rejection (“If it is based…”). Indeed, the court actually says “we doubt that the rejection is truly based on section 112…” along the way to affirming the rejection nevertheless.

      I think that the separate WD requirement plays an absolutely vital role in a well-functioning patent system, so I am glad that the courts have maintained this WD/enablement distinction. If I am being fair, however, to the WD’s critics, I have to say that the courts do not seem to regard it as an absolutely necessary implication of the statutory text, but rather as a sort of penumbra emanating from the internal logic of §112 in lived practice.

  4. 7

    A proper enablement rejection requires findings of fact regarding undue experimentation. From my experience at the USPTO, those findings are very rarely made. Consequently, when those kind of rejections going to the Board, they are typically reversed.

    While the Board will bend over backwards to affirm 101, 102, or 103 rejections, my experience has been that the Board rarely affirms a 112 rejection (regardless of the flavor).

    1. 7.1

      This jibes with my experience as well.

    2. 7.2

      I agree with this based upon my experience as well. The one major caveat is Written Description rejections based upon new matter. (Typically also objected-to under 35 U.S.C. 132).

      1. 7.2.1

        The one major caveat is Written Description rejections based upon new matter.
        I understand that there are situations where the attorney inadvertently (or not) attempts to claim something that isn’t there and a written description (WD) rejection is appropriate. However, from my experience, I still see WD rejections even on language that I pulled directly from the specification. The problem I see with the vast majority of the 112 rejections (again, regardless of the flavor) is that the examiners are not applying the appropriate standard.

        For example, I’ve been getting multiple WD rejections from the same examiner, albeit in different applications, in which the examiner is saying that the specification doesn’t describe how to ‘use’ the particular limitation. How to ‘use’ the invention refers to enablement — not WD.

        My experience has also been that the vast majority of the (bad) 112 rejections I get are from a single Tech Center. Those who prosecute will have little difficulty guessing which one it is.

        1. 7.2.1.2

          My experience with 112 rejections is that many examiners are under the belief that the rejection need only be based upon whether they find the claim to be enabled, having sufficient written description or definite. The rejections are all supposed to be based upon whether a person of ordinary skill in the art would find the claim to be enabled, having sufficient written description or definite.
          The basic weakness of the 112 rejections that I have seen is that the Examiner has failed to determine the level of ordinary skill in the art and is therefore incapable of stating what a person of skill would or would not know. This is something every practitioner needs to call Examiners out on! Examiners do not know how to determine the level of ordinary skill in the art.
          As a 112 rejection is not prior art based, Examiners should not be able to rely on the cited prior art as implicitly setting forth the level of skill in the art, and this is especially true where there are no prior art rejections.

        2. 7.2.1.3

          Wt,

          Some of the ‘pushback’ that I have seen for cases as you describe is, “enablement is a secondary consideration, and I could ALSO reject you on that, but the genesis of THAT rejection may be seen by answering the question: “how can you enable that which is not described?” The “suggestion” is that IF you had described, THEN the enablement issue would take care of itself.

          I am NOT saying that this line or reasoning is a correct one – only saying that this is what I have heard.

    3. 7.3

      I kept on thinking that the Office multiple track response to 101 (the 2019 PEG was accompanied by 112 training) would have yielded a more thorough basis of examiner understanding as to how to even reach a prima facie case of a proper 112 rejection.

      That has just not happened.

      While we did indeed see a lively trend of 112 rejections being made, our typical responses deconstructing the rejections and showing them to fail to reach a prima facie level routinely sees these rejections being withdrawn.

      1. 7.3.1

        This comports with my experience in traversing 112 rejections.

    4. 7.4

      “the Board rarely affirms a 112 rejection (regardless of the flavor).”

      I looked at 3600 WD rejections over the first half of 2021 and got a 36% total-affirmance rate on those rejections.

      Bad, but not rare. Though I’d guess including the rest of 112, especially 112(b), would probably reduce the rate.

      1. 7.4.1

        Was your looking constrained to one particular art unit?

        This sounds in a project our esteemed academia providers here would typically glom onto.

  5. 6

    The link to Mersel did not work for me.

  6. 5

    Re: “separating the written description and enablement requirements has born more confusion than fruit.”
    No doubt confusing to some examiners and judges. But separating these two different requirements occurred a relatively long time ago in interferences, and there are situations where it is clearly appropriate. For a theoretical example, assume a patent application claiming a chemical compound with an enabling spec disclosure of one method of making a precursor but no suggestion that the latter was an invention or the invention of the applicants. I.e., no “written description.” Then the applicant adds claims to that precursor making method to try to get into an interference [or lawsuit upon issuance] after seeing patent activities of someone else. I.e,, U.S. extreme “late claiming”, for which the patent term limit statute is not a bar.

    1. 5.1

      BTW, the prior misreading’s of the 1942 Sup. Ct. Muncie Gear Works v. Outboard Marine decision as establishing a “late claiming” doctrine was rejected and eliminated as a separate basis for claim invalidity [as confused with “new matter” issues] in Westphal v. Fawzi (CCPA 1981) and Railroad Dynamics Inc. v. A. Stucki Co (Fed Cir. 1984), and even Wikipedia is confused as to that term.

      1. 5.1.1

        and even Wikipedia is confused

        ever since Wikipedia was ‘captured,’ and its updating functions put under a more strict ‘internal review,’ the confusion appears to be both growing and being denied to even exist.

  7. 4

    IMHO, “written description” is best understood as CAFC made law to bar ‘late claiming’ ergo the dreaded submarine patent. For the most part this has been addressed with the change of patent term from priority date and not the issue date. It should be kept in that box.

    Next:
    The claim is clear as to the structure required by the claim (e.g., a plurality of shrouded laterally oriented thrusters) and the functionality required by the claim (e.g., compensate for gusts of wind and force a descent).

    If the specification does not describe how to enable that function “compensate for gusts of wind” in other words, recasting the claim as
    “means for” compensating for gusts of wind, lacking enablement sounds proper IMHO. To be sure, definiteness is a related issue, since it is the CLAIM that is being examined for enablement of the claimed invention. The old saw – claim broad, prove broad – springs to mind. If the only means for the lateral thrusters to compensate for wind gusts, is via the ground operator, the examiner is and should force that claim to be narrowed. On the other hand, if the specification discloses and enables, say for example, some inertial navigation loop that can drive those lateral thrusters to ‘compensate for wind gusts’ examination as to whether that is enabled and then CLAIMED as such, is exactly what the examination is about, and here again appropriate for the examiner to require narrowing the claim – to enable the claimed invention. Asking ‘how’ does the specification accomplish the claimed invention to be sure, puts more responsibility on the patent applicant to drill down on the inventor to disclose the ‘how’ exactly the specification is enabling the CLAIMED invention. IMHO, a return to the basics – how – where is it specifically described/enabled? is the best measure against the often decried ‘junk patents.’ Here again, requiring for example an appendix to the specification where the code is disclosed, to say for example, enable the claimed invention, harkens back to the days wherein a working model was required to enable the claimed invention.

    1. 4.1

      iwt,

      wondering out loud in response to your post, should Congress simply “cut to the chase” and return to requiring actual working models?

      (of course, given that the vast multitude of patents are improvements patents — and such are not guaranteed to be of infringing on others’ patents, there would likely need be an exception to infringement for such “positive build” aspects that would “simplify” the enablement issue)

  8. 3

    The issue I see during prosecution is that enablement and indefiniteness are to be determined from the perspective of a person skilled in the art. How many Examiners, PTAB judges, DC judges or CAFC judges qualify? There are a few that might qualify but not many. They are confronted with, and have to decide, on the meaning of technology that is supposed to be interpreted by someone with very specific training and expertise. Because they don’t have it, they have to rely on either the arguments put forth by the attorneys involved or their own (and incomplete) understanding of the subject. The fact that they can’t understand something completely makes it easy to see why enablement and indefiniteness get confused or misinterpreted. Strong advocacy by an attorney, with carefully drafted “expert” declarations, can persuade them to decide one way or the other, but that just doesn’t mean the technology is being understood properly. The understanding of a person skilled in the art should not be subject to attorney argument, but the fact that these decisions are all over the place and inconsistent suggests that it often is.

    1. 3.1

      Of course you do realize that “a person of ordinary skill in the art” is a legal fiction akin to the ‘reasonable person’ standard in for example negligence. This fiction changes too, for example, it might be a ph.d for a biologic invention in contrast to an BSEE for an inventive new computer.

    2. 3.2

      Well said.

  9. 2

    How many APJs work under the aegis of PTAB? How many possible combinations of three adjudicators does that make?

    PTAB is not a monolith, and I would expect to see differences in the treatment of the same subject across different PTAB panels. But if listing the three CAFC judges (out of 15?) on a given panel is too much work in the write-ups here, listing three APJs (out of many more) on PTAB panels will clearly be too much work. Better to continue to pretend that PTAB always speaks with one voice.

    1. 2.1

      I am reminded of the adage: closing your eyes lets you not see the problem (but does nothing to make it go away).

    2. 2.2

      Important point AM.

  10. 1

    The claim is clear as to the structure required by the claim (e.g., a plurality of shrouded laterally oriented thrusters) and the functionality required by the claim (e.g., compensate for gusts of wind and force a descent).

    Eh I’m not sure I agree with this. There may be indefiniteness when it is unclear how to affect the functionality with the structure.

    The most basic example of this would be the system of “a flying car.” I reject the notion that an undescribed claim to a flying car is rejectable solely on an unenablement threshold. The fact that the structure cannot perform the function is a claim to a vague modification that renders the claim indefinite. The response to this is that vague modifications are simply a cause of a broad-but-definite scope. But the response to that argument is that it certainly isn’t *reasonably* vague. The specification certainly won’t show that the inventor believes this structure is physically the ONLY method by which a car could fly. And this particular invented structure which causes the car to fly (or the modifications to the structure of a car) is clearly amenable to a less vague explanation – it has to be in order for the enablement requirement to be met. The claim is intentionally not describing what this invention is (a particular structure for causing a car to fly) by replacing it with what the invention clearly is not (ALL means for causing a car to fly) when a more accurate definition is not only clearly available, but actually posited by the scrivener. How could the claim meet the “reasonable certainty” standard then?

    I forget the case, but the logic I remember was something like “It makes very little sense for someone to invent a doorknob, claim a system with the doorknob in connection with a building, and then mark the building as patented.” It doesn’t fulfill any of the purposes of the patent act to do that, and it certainly flies in the face of “pointing out and particularly claiming” to hide the inventive aspect in a mound of unrelated context.

    I confess that – at the office level at least – I can’t think of a time when you’d HAVE to use indefiniteness in this type of situation when unenablement would suffice as a legal matter.

    I simply don’t think that’s the law, and it matters in post-issuance. Gen Electric v Wabash had a definite function (prevent sagging) and a definite structure (grains) but that was still indefinite rather than unenabled. Presumably its a lot easier to invalidate on the four corners on indefiniteness than it is for enablement.

    In the end, this was a fairly disappointing reading journey and helps restore my prior thoughts that a separating the written description and enablement requirements has born more confusion than fruit.

    You’re looking in the wrong subject matter areas.

    1. 1.1

      Confusion? You bet. What would help is for the courts to keep in mind what the three separate requirements are for.

      Enablement goes to the Quid pro Quo.

      WD (under First Inventor to File) is for ensuring that the rights (in any specific claimed subject matter) are indeed bestowed on the First one to File. Applicant forbidden to improve its position, post-filing.

      Definiteness is needed so that the public knows whether they infringe the duly issued claim.

      Further help can be taken from the established case law of the EPO because under the EPC the grounds of revocation include lack of enablement but NOT indefiniteness. Thus it is that for the last 40 years the EPO has had to make it very clear to patent owners and opponents what is a legitimate enablement attack on the patent and what is in fact an indefiniteness attack masquerading as an enablement attack. The case law on the subject is established and mature.

      Dennis there is no alternative but to “separate” the WD and enablement requirements, is there? Both are needed, aren’t they? They are complementary to each other, aren’t they?

    2. 1.2

      RG, you surmise that, often, even typically, it is “a lot easier” to put together a persuasive attack on definiteness than it is one on the issue whether the claimed subject matter is enabled. Duuh! Of course that is so. And it is the explanation for at least the following:

      1. Examiners, ex parte, smelling a lack of enablement, will likely couch their reservations as attacks on the definiteness of a claim, for pursuing the want of enablement would most times be futile, a complete waste of energy and worse, a boon to the Applicant.

      2. Any party putting validity in issue after grant will always contend that the claim is indefinite, regardless how spurious that contention happens to be. That’s why the EPC allows enablement and WD attacks on validity, post-issue, but not attacks on the definiteness of the duly issued claim.

      3. To do justice to enablement issues requires inter partes proceedings. The decider needs both sides of the story, told by competent technical experts from both sides of the issue.

    3. 1.3

      I wonder if Random has ever seen a claim with an element sounding in function that he would deem valid.

      1. 1.3.1

        Per the notes above by ipguy and between he and I, I can easily see that Random is the type of examiner ‘big’ on initial 112 rejections, and also as big on 112 rejection withdrawals.

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