Federal Circuit Affirms Patent Rejection for Lack of Enablement in In re Pen

by Dennis Crouch

The Federal Circuit (CAFC) recently affirmed a USPTO enablement rejection — holding that the patentee did not enable the “full scope” of the claimed invention.  In re Pen, 23-2282 (Fed. Cir. 2024) (non-precedential).  As an aside, the listed inventor’s legal name is “The Pen;” first and last name respectively, with no middle initial.  Based upon Pen’s address, he is related to “The People’s Email Network.”  In the case, Pen represented himself pro se.

Pen’s patent claimed “polycyclic metallole heteroatom rich conductive long chain polymers” comprised of certain repeating units. The idea here is to create a conductive polymer for use in new battery technology.  Key limitations in the claims at issue here are that the metallole heteroatom is nitrogen, there are more than eight repeating units (n>8), and a substituent R can be any substituent.

In affirming the PTO’s refusal, the Federal Circuit found that substantial evidence supported the Board’s factual findings on the Wands factors and found no legal error in its enablement analysis.

As the Supreme Court did in Amgen, the Federal Circuit focused on the breadth of the claims compared to the teachings of the specification and the along with the state of the prior art. The court noted that the claims allow R to be any substituent and also permitted any number of repeating units n to be over 8.

The state of the prior art also weighed against enablement, as the closest prior art polymers only had n=8 repeating units. The court rejected the appellant’s argument that this reasoning was illogical because it would require the invention to already exist in the prior art. Rather, the proper analysis looks at the gap between the scope of the claims and what the prior art already enables.  That gap must be filled by the specification.

Additionally, the court found that the field of conductive metallole polymers is unpredictable, further weighing against enablement. While the appellant argued that a skilled artisan could polymerize the monomers and carry out the claimed reactions based on the specification, the court emphasized that this does not necessarily enable the full scope of n values and R substituents covered by the claims.

Regarding the amount of guidance and examples in the specification, as well as the quantity of experimentation required, the court agreed with the Board that the specification did not provide sufficient guidance to enable the full claim scope without undue experimentation. Even if the specification enables some n values and R substituents, that is inadequate when the claims have open-ended ranges tat are much broader.

Throughout its opinion, the Federal Circuit stressed the breadth of the claims compared to the more limited disclosure. “The specification must enable the full scope of the invention as defined by the claims. . . . In short, the more you claim, the more you must explain.”  Citing Amgen Inc. v. Sanofi, 143 S. Ct. 1243 (2023).

The appellant made several arguments that the Federal Circuit rejected. First, the appellant argued that the choice of R substituent does not affect the conductivity or synthesis of the polymer.  The idea here is that comprising-style claims are always extremely broad in areas of less importance, and that reality should not spoil the validity of those patents.   Instead of fully engaging, the court noted this argument was made for the first time on appeal and was therefore forfeited.

Second, the appellant challenged the Board’s reliance on references not cited by the Examiner when discussing the closest prior art. The court disagreed that this constituted a new ground of rejection, finding the Board merely further explained the Examiner’s reasoning and the underlying legal standards.

Finally, the appellant argued that the Examiner’s analysis on some of the Wands factors was conclusory and irrelevant included boilerplate language, and that the Board had improperly relied upon that analysis. While the court agreed some of the Examiner’s language was “less than exemplary,” it found no reversible error in the Board’s ultimate conclusions on the Wands factors.

This case again includes strong language surrounding the enablement requirement.  However, the case arises in the “unpredictable arts” of chemistry that appears continue to be a key feature of enablement rejections that stick.

72 thoughts on “Federal Circuit Affirms Patent Rejection for Lack of Enablement in In re Pen

    1. 5.1

      “Representatives of AI companies have themselves admitted that if they paid fair royalties to all the artists whose work they’ve scraped and stolen in order to get their models working, they’d be financially unfeasible. ”

      Wouldn’t that just make “fair royalties” and perhaps the number of artists put into the system less?

      “The energy requirements for running even a simple AI-powered google query are so prohibitive that Sam Altman has now started to pretend that he can build cold fusion in order to solve the problem he and others like him have created.”

      Meh, it’ll get taken care of.

      “And the dreaded “hallucination” problem in AI-generated text and images is an inherent attribute of the technology”

      Nobody cares.

      “Even in cases where there are legitimate, useful applications for AI—apparently if you provide a model a specific set of sources, it can produce accurate summaries, which has its uses in various industries—there remains the question of whether this is a cost-effective tool once its users actually have to start paying for it (and whether this is even remotely ethically justifiable given the technology’s environmental cost).”

      Fun but not going to slow anything down mr. prog.

      “though, again, I must stress that if AI was priced realistically—and if water and energy for server farms were sanely priced—there is no AI tool that would be cheaper than a human doing the same job”

      Fun for now, 10 years down the road, it’ll be a whisper of a giggle.

      “in the context of a Silicon Valley that hasn’t come up with a new killer app that genuinely revolutionizes users’ lives since maybe as far back as the smartphone, and where advances in screens, cameras, disk sizes, and computing power have plateaued to a point that no one feels the need to upgrade their devices every year.”

      Fun, but nobody cares, SV served it’s purpose, and will continue serving in some capacity, and all the cool kids are now “on a plan” to get a new device every 2 years for 20 bucks a month payments (in addition to their cell plan that robs them). Note, I am not one of those cool kids.

      “When the VP elaborated, it turned out he was talking about some kind of fancy algorithm to evaluate network load and adjust capacity dynamically.”

      Yeah just call whatevz “AI” for your field and it’ll fool the normies. It’s a whatever.

      “What this means is that it is up to all of us to fight back against the induced semantic slippage that the AI industry is trying to get us to accept. ”

      Not really, us engineers have to bow to the normie. Tis what it tis. It’s how language works.

      Bottom line, MM and progs btfo by normies, for the gazillionth time.

        1. 5.1.1.1

          Meanwhile …

          “ McDonald’s is changing course on its artificial intelligence plans. The fast-food giant will end a test run of its AI drive-through technology partnership with IBM in more than 100 restaurants. The so-called Automated Order Taker will be shut off no later than July 26”

          ROTFLMAO

          1. 5.1.1.1.1

            Perhaps because McDonalds has other fish to fry given recent revelations of “personalized” predatory pricing…

            That being said, anything with that much explosive take-up (Malcolm, you never did admit to the use take-up stats I provided) is bound to have some regression from over hype and return to a lower sustainable level.

            That certainly does not mean that we will be returning to pre-AI days (as much as you may wish for that, given your disdain for computing as witnessed how you think that computing advances do not deserve patent protection).

            1. 5.1.1.1.1.1

              “pre-AI”

              LOL

              1. 5.1.1.1.1.1.1

                Or perhaps to be more clear: pre recent advances of AI.

                Or are you in denial that there have been recent advances?

              2. 5.1.1.1.1.1.2

                Every time you scoff at AI, I am reminded of that scene in Young Frankenstein, where the audience are jeering the monster because his dance steps are not as elegant as Gene Wilder’s.

                1. It certainly is not limited to AI for Malcolm’s unreasonable scoffing, given that he is against most all computing arts.

                  And your hidden link of Eve”r”y actually has something from Noah with some substance – and worth comparing to perhaps the biggest population Doomer, Peter Zeihan.

                  I do not think that Peter agrees with Noah and likely uses a very different set of stats (prominently, Chinese supplied data has been shown to be VASTLY overstated).

  1. 4

    The deficiency in the examiner’s enablement rejection is probably because the USPTO was not training examiners on how to make enablement rejections when I was an examiner. Being a lawyer, I made strong enablement rejections as I was taught in law school when doing a balancing of factors legal analysis from RWA. I wound up training my fellow examiners, even those senior to me, on how to write an enablement rejections. I guess my OACs enablement rejection script for Word never made it over to the chemistry art unit from business methods. Finally, the CAFC did something right backing up the examiners rejection and this hopefully encourages more enablement rejections and more training. Looks like patent attorneys will have to stop slacking off and actually do their job right for a change.

    1. 4.1

      1. 4.1.1

        What an insightful comment, Snowflake! Explain to us again how science fiction literature can never serve as a prior art reference.

        1. 4.1.1.1

          Yay ( ) – my 0bsess1ve stalker is starting fresh.

          1. 4.1.1.1.1

            I don’t have the time to click on your links, Snowflake. But which are the multiple anons are you?

            In the meantime, explain to us again how science fiction literature can never serve as a prior art reference.

            1. 4.1.1.1.1.1

              You think anybody is fooled by your misdirection, Snowflake? Focus. Explain to us again how science fiction literature can never serve as a prior art reference.

              1. 4.1.1.1.1.1.1

                Yay – you answering you (while both 0bessing over me)

                An easy question for you (reflecting your question to another):

                Should obviousness be a question of fiction?

                1. “Your choice of false assertions is a choice that earns me coin.”

                  Thank$

                  (at this point, what is your point?)”

                  Repetition and regurgitation.

                  If you are not cheap AI, Snowflake, then what are you?

                2. Repetition and regurgitation.

                  Two responses immediately come to mind:

                  1) have you looked in the mirror?

                  2) you seem confused that my responses to you and your choices have to be ever better. My prior responses remain better than your €hoi€e$, so I can continue to use them as they continue to outshine your efforts.

                  It’s like two hikers in the woods encountering a hungry grizzly, I do not need to be a world class sprinter; I just need to be faster than you.

                3. “ It’s like two hikers in the woods encountering a hungry grizzly, I do not need to be a world class sprinter; I just need to be faster than you.”

                  I thought you liked bears.

                4. You do realize, Snowflake, that is exactly how cheap AI would tell the “only need to be faster than you” bear joke?

                5. I have my computer set up to read anon’s comments aloud using the voice of a young, upper class British woman.

                6. Pythonesque upper class?

                  Anyhow, you bring good advice, Snowflake. We thought you might be cheap AI but we did stop for a moment and think. And then some more. Upon reflection, you have demonstrated beyond a reasonable doubt that human is not your first language.

                7. Pretending to be a human being, Snowflake? Nobody is fooled.

                  What was that imaginary registration number again?

                8. You mention Python, then 1gn0re the ‘favorite color’ line?

                  How much of a Python fan are you?

                9. only cheap AI would think we missed the python reference, Snowflake.

                  nobody is fooled by your misdirection.

                10. The thing is, your false assertions was a tactic prior to your presentation AI cover.

                  It just comes across like you are mindlessly jumping on a bandwagon.

                  It has little to no value.

                  Maybe try engaging on a substantive point.

                11. so “cogent” is an American word they teach cheap Chinese AI pupils in cheap Chinese AI school, Snowflake.

                12. So you still lack the ability to understand context.

                  Of course, that does not stop your 0bsess10n over me.

                13. That’s offensive, Snowflake. We are going to have to close comments on you. Again.

                14. What – precisely – do you feel is offensive?

                  (knowing that your “close comments” is more feeble than many of your other tactics, please feel free to provide a cogent answer – if you dare)

                15. I feel that it’s offensive for cheap, cheap Chinese AI to pretend knows anything about patent law, Snowflake.

                16. you really think you can pass the Turing test, Snowflake?

                  Question 1.

                  Who are you?

                17. Well it is easy to see that your feelings are misplaced.

                  Easy, and not at all surprising.

                  As to who I am, you continue to want some type of “outing” answer while you have never provided a non-outing answer to my question asked of you – and asked first – of what role did you have at the patent office prior to your retirement.

                  Notwithstanding that the ball is in your court, I have informed you that I am a patent attorney (to which Prof. Crouch can attest) – only to see you show that you have no real interest in an actual answer and only seek to continue your cyber-stalking harrasment.

                  Please try to have conversation that has some merit instead of the display of your 0bsess10n over me.

          1. 4.1.1.2.1

            ok, Snowflake. Have Prof. Crouch attest. or does cheap Chinese AI even know what it “said” on another “thread?”

            1. 4.1.1.2.1.1

              You seem stuck on the word “attest’ – and repeating yourself across different threads.

        1. 4.1.2.1

          Yay ( ) – my 0bsess1ve stalker is starting fresh.

          Well, as fresh as he can.
          So, not fresh at all.

            1. 4.1.2.1.1.1

              You asked many times now and I have responded many times now.

              Why would I out myself when you won’t even confirm — in a non-outing manner — the position that you had at the patent office before you retired?

              The ball is in your court (first).

              1. 4.1.2.1.1.1.1

                our comment is awaiting moderation.
                July 12, 2024 at 8:51 pm
                ladies and gentlemen, this is cheap Chinese AI at its best.

                “Your same script routinely is how came up with the idea to monetize your choices.”

                1. Try again.

                  Or maybe try for the first time.

                  Start simply and try to make an actual cognitive point.

                  Take your time – ask a friend.

                2. And once again, ladies and germs, that is the confused voice of cheap (really, really cheap) Chinese AI.

          1. 4.1.2.1.2

            Ahh we see Snowflake. Prof. Crouch can”attest” you are a “patent attorney.”. Anybody can call themselves a “patent attorney.” So your misdirection was pretending to be a registered practitioner with the USPTO with an actual non-imaginary registration number?

            Brilliant!!

            1. 4.1.2.1.2.1

              And repeating yourself within a thread as well.

              How gauche.

    2. 4.2

      I’ll take things that never happened fro $800, Alex.

  2. 3

    The state of the prior art also weighed against enablement, as the closest prior art polymers only had n=8 repeating units… Additionally, the court found that the field of conductive metallole polymers is unpredictable, further weighing against enablement.

    The opinion is just pages of this very detailed finding about the state of the art. It is illogical that written description should be treated as a question of fact, while enablement is treated as a question of law. Both issues arise out of the exact same text portion in §112, so they should both be law or both be fact.

    This opinion is an excellent example of why enablement should be a question of fact. This case was very fact intensive, and rightly so. Nothing about an expertise in law leaves one well positioned to say how much disclosure is necessary to enable the full scope of this claim.

    1. 3.1

      Yglesias

      §

      So Sprint Left.

      1. 3.1.1

        We understand, Snowflake. Cheap Chinese AI has not been trained to understand everything. Or most things.

        1. 3.1.1.1

          Still not good (of you)

    2. 3.2

      Should obviousness be a question of fact?

      1. 3.2.1

        Great question. I do not have strong opinions on this point, but I do have just a few thoughts:

        1) Short answer, yes. If we could go back in time before this point was settled, the courts should have established obviousnesslike its sibling, noveltyto be a question of fact.

        2) The distinction does not actually seem to matter in practice, so it is not worth it to upset the apple cart by overturning precedent.

        3) It is not clear to me that the “person having ordinary skill in the art” of §103 is the same person as the “person skilled in the art” of §112, so the question of whether enablement is an issue of law or fact is not necessarily as relevant as many suppose to the question of whether obviousness is an issue of law or fact.

        1. 3.2.1.1

          Not clear to you….

          Gee, that is satisfying.

          It is only logical that they BE the same legal fiction.

          What possible reasoning would there be to have these two legal fictions to be different, and what cans of worms are opened if they BE different (both in degree and kind)?

        2. 3.2.1.2

          “3) It is not clear to me that the ‘person having ordinary skill in the art’ of §103 is the same person as the ‘person skilled in the art’ of §112, so the question of whether enablement is an issue of law or fact is not necessarily as relevant as many suppose to the question of whether obviousness is an issue of law or fact.”

          Really?

            1. 3.2.1.2.1.1

              Your “We” link only takes one to the Substack app.

              1. 3.2.1.2.1.1.1

                The link works just fine for me, Snowflake. Did somebody break the links for cheap AI? Who could have done that??

                link to cdn.patentlyo.com

                1. Perhaps you have already signed up for that particular item (which would bypass the landing page).

                  This is not the gotcha that you long for.

                2. I see that you have corrected yourself (the broken links remain broken for all — that’s captured in black and white).

                  Better yet though, would be you learning how to directly use the emoticons instead of merely linking to them.

                3. This link works ok – but your others do not.

                  But again, I have shown you how to present without resorting to a mere link.

                  Is that just too difficult for you?

                  (And thank you for your choices that provide me coin)

                4. Still having to provide a link when you have been instructed how to embed…

                  Alas, the irony of your choice is lost on you.

  3. 2

    He/She needed to spill more ink on the subject.

  4. 1

    “the Federal Circuit found that substantial evidence supported the Board’s factual findings on the Wands factors”

    And in what manner did the Board determine the level of ordinary skill in the art? This would have been the perfect opportunity for a pro se applicant/appellant to argue that the Examiner/Board failed to properly determine the level of ordinary skill (i.e., that the cited references reflect an appropriate level of skill). Then the Wands analysis would not have been complete.

    1. 1.1

      The Examiner’s Wands analysis of skill level determination was about as bad as I thought it would be.

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