Comments on: Q) Chemical Claim (MPEP 2100)

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.

By: Ricky

Ricky — Tue, 01 Nov 2011 19:10:20 +0000

Guys, I think (A) is correct.

” Argument Only” is enough to rebut enablement rejection if it is convicing enough. For example the practioner may argue that an undergraduate student major in chemistry would know how to make it so long as he/she sees the fomular/structure, and PHOSITA in this field are those with master degree.

MPEP 2100-198 –”In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal.”

Therefore factual evidence is not 100% necessaary.

In addition formulas and technical data in the spec would be enough to show possesion and rebut written description.

By: ReadyAndWilling

ReadyAndWilling — Mon, 17 Oct 2011 00:49:24 +0000

“Enablement is distinct from written description requirement” is a description in the MPEP to better understand how to interpret 112. It is not a response by an examiner. The examiner must reject under both. No formula, no PHOSITA knowledge thus no enablement. No formula, no proof of possession (unless otherwise stated) no proper description as the description functions as proof of possession in this light.

By: Greg

Greg — Tue, 11 Oct 2011 20:58:09 +0000

To Maggie, the answer is (C): “enablement is distinct from written description requirement”

MPEP 2161, Subheading “The Three Requirements are Seperate and Distinct From Each Other”

“The written description requirement is seperate and distinct from the enablement requirement. An invention may be described without the disclosure being enabling, and a disclosure could be enabling without describing the invention.”

By: patentgeekchick

patentgeekchick — Fri, 23 Sep 2011 00:41:09 +0000

Got this. Can’t remember a thing =/
I thought Written Description was ok. Wouldn’t know…

By: Nick

Nick — Wed, 07 Sep 2011 21:03:35 +0000

Got this question on 9/7/11.