Comments on: Q) Chemical Claim (MPEP 2100)

By: Sabrina

Sabrina — Fri, 11 May 2012 17:20:54 +0000

05-10-12: Got a variation asking what the examiner should do as a first office action given: 1. no formula and no way for phosita to know how to make it, but 2. evidence that inventor was in poss’n at time of application.
answer choices included just enablement rejection, just written description rejection, no rejection, and combination of both (can’t recall the fifth choice). I picked the answer that said just enablement rejection because written description is satisfied because there is evidence that inventor was in poss’n at time of application.

By: RT

RT — Fri, 11 May 2012 16:45:40 +0000

Got it 5-10-12

I’m still not sure of the right answer…

By: Miranda

Miranda — Sat, 07 Apr 2012 21:31:09 +0000

Voodoodaddy is correct. Got both variants today. In this variant, the fact pattern specifically told you he sufficiently showed possession of the compound, and therefore written description requirement was met.

By: Sol

Sol — Sat, 07 Apr 2012 02:05:16 +0000

You alwasy need to submit rebuttal argument. The argument needs to be based on evidence (factual or opinion,from the application as filed or from somewhere else)

By: Sol

Sol — Sat, 07 Apr 2012 02:03:30 +0000

B is wrong not because of it is an argument or someone’s argument.

B is wrong because this false statement embeded therein: “alone, inasmuch as they can take the place of evidence in the record”

By: maggie

maggie — Tue, 15 Nov 2011 22:05:59 +0000

112 p1 distinct from written description requirement
Enablement Q: Is the invention able to practice without undue experimentation?
Written Description: Q: Is the inventor in possession of claimed invention at the time of filing?

The application shows the formula but did not disclose how to make chemical. No prior art shows how to make the chemical in question either. What is an appropriate response from the Examiner?
(A) Reject written description (HAS FORMULA = NO)
(B) reject both written description and enablement (NO inventor has FORMULA and YES public is not enabled so, overall –> NOT Correct)
(C) enablement is distinct from written description requirement. (True MPEP 2161)
(D) require enablement request from applicant (True need to enable public to get patent granted but maybe not best answer)

By: maggie

maggie — Wed, 02 Nov 2011 15:42:18 +0000

Factual evidence ALWAYS trumps arguments so A is the best answer.

By: Ricky

Ricky — Wed, 02 Nov 2011 03:44:09 +0000

In addition, unfair game for enablement rejection:

The examiner could use later publication/patent to support “non-enable”

but you CANNOT use such later publication/patent to show “enable”. (E) in above question.

By: Ricky

Ricky — Wed, 02 Nov 2011 03:39:47 +0000

2003 Aprial Am Q49
An examiner has advanced a reasonable basis for questioning the adequacy of the enabling disclosure in the specification of your client’s patent application, and has properly rejected all the claims in the application. The claims in the application are drawn to a computer program system. In accordance with the USPTO rules and the procedures set forth in the MPEP, the rejection should be overcome by submitting _____________
(A) factual evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone.
(B) arguments by you (counsel) alone, inasmuch as they can take the place of evidence in the record.
(C) an affidavit under 37 CFR 1.132 by an affiant, who is more than a routineer in the art, submitting few facts to support his conclusions on the ultimate legal question of sufficiency, i.e., that the system “could be constructed.”
(D) opinion evidence directed to the ultimate legal issue of enablement.
(E) patents to show the state of the art for purposes of enablement where these patents have an issue date later than the effective filing date of the application under consideration.

The answer is (A). (B) is incorrect not because it is “arguement”, but “Arguments of Counsel,”. It’s kind of language game here……My best take is, to rebut enablement rejection, only arguement from applicants is allowed because their knowledge in this field. Arguement from counsel is not enough.

correct me if I am wrong.

By: Ricky

Ricky — Tue, 01 Nov 2011 19:20:23 +0000

Also I remenber an old exam question (02 or 03…) asking what CANNOT rebut enablement rejection, and the answer is something like “amending a picture”. “Arguement” is one of the 5 answers, that means argument can rebut.