Q) Enablement (10.03.32)

Test takers report a #32 from the October 2003 (AM) patent bar exam is in the current question pool.

32. With respect to the examiner’s burden in making an enablement rejection under 35 USC 112, first paragraph, which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP?
(1) The examiner may properly make an enablement rejection before construing the claims.
(2) The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention.
(3) The examiner need not give reasons for the uncertainty of the enablement when there is no evidence of operability beyond the disclosed embodiments.
(A) Statement (1) only
(B) Statement (2) only
(C) Statement (3) only
(D) Statements (1) and (2)
(E) Statements (1) and (3)

ANSWER: (B) is the most correct, as only statement (2) is true. The examiner has the initial burden to establish a reasonable basis to question the enablement provided. MPEP § 2164.04 states “[i]n 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. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of protection provided by a claim is not adequately enabled by the disclosure).” Answer (A) is incorrect, because statement (1) is not true. The examiner may not analyze enablement before construing the claims. MPEP § 2164.04. Answer (C) is incorrect, because statement (3) is not true. The examiner must give reasons for the uncertainty of the enablement, even when there is no evidence of operability without undue experimentation other than the disclosed embodiments. In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995). MPEP § 2164.04 states “[a]ccording to In re Bowen, 492 F.2d 859, 862-63, 181 USPQ 48, 51 (CCPA 1974), the minimal requirement is for the examiner to give reasons for the uncertainty of the enablement.” Answer (D) is incorrect because it includes false statement (1). Answer (E) is incorrect because it includes false statements (1) and (3).