“An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed… Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed.”

“Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete.”

MPEP 2161 I. A. Original Claims
There is a strong presumption that an adequate written description of the claimed invention is present when the application is filed. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976) (“we are of the opinion that the PTO has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims”).

MPEP 2163.04 Burden on the Examiner with Regart to the Written Description Requirement
A description as filed is presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary
has been presented by the examiner to rebut the presumption. See, e.g., In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). The examiner,
therefore, must have a reasonable basis to challenge
the adequacy of the written description. The examiner has the initial burden of presenting by a preponderance
of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims.

MPEP 2164.04 Burden of the Examiner Under the Enablement Requirement
In order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question
the enablement provided for the claimed invention.
…
must be taken as being in compliance with the enablement requirement of 35 U.S.C. 112, first paragraph, unless there is a reason
to doubt the objective truth of the statements contained
therein which must be relied on for enabling support. Assuming that sufficient reason for such doubt exists, a rejection for failure to teach how to make and/or use will be proper on that basis.

B. Examiner should withdraw enablement rejection, but keep written description as the application does not show how to make said chemical.

If the evidence the applicant presented was about how to make it, I’d agree that might merit a withdrawal of a rejection based on enablement. But the answer says “…but keep the written description rejection because he still hasn’t shown how to make the chemical” – isn’t that what he just did? he showed that PHOSITA’s know how to make it, right? are we sure the answer choice didn’t say “…but keep the written description rejection b/c applicant still hasn’t described the invention,” or “because his reply was not responsive to the written description rejection?”

also i’m not sure about the previous poster’s conclusion that if you’ve shown how to make the composition, you will have necessarily decribed the invention and, therefore, have satisfied written description. that seems to be the very conclusion that 2161 is warning you not to make. plus, is it just a coincidence that 2161, like this question, uses the example of a chemical compound to illustrate the distinction?

thoughts?

2164 The Enablement Requirement [R-2]

Last Para..

Furthermore, when the subject matter is not in the specification portion of the application as filed but is in the claims, the limitation in and of itself may enable one skilled in the art to make and use the claim containing the limitation. When claimed subject matter is only presented in the claims and not in the specification portion of the application, the specification should be objected to for lacking the requisite support for the claimed subject matter using Form Paragraph
7.44. See MPEP § 2163.06. This is an objection to the specification only and enablement issues should be treated separately.

The rejection on written description was only because if the applicant could not show that it was enabled, he could not possess it. However, if the prior art, and skill in the art shows that making the chemical is common knowledge, the examiner could not maintain an objection that the inventor did not posses the invention…