Q) Enabling Disclosure (4.03.49a)

by admin on April 10, 2010 · 5 comments

in Exam Questions

Question #49 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam question pool.

49. 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.

ANSWER: (A) is the most correct answer. See MPEP § 2106.02 under the heading “Affidavit Practice (37 CFR 1.132).” 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 can rebut a prima facie case of nonenablement. See Hirschfield v. Banner, Commissioner of Patents and Trademarks, 200 USPQ 276, 281 (D.D.C. 1978). (B) is not correct. MPEP § 2106.02, under the heading “Arguments of Counsel,” and see In re Budnick, 190 USPQ 422, 424 (CCPA 1976); In re Schulze, 145 USPQ 716 (CCPA 1965); and In re Cole, 140 USPQ 230 (CCPA 1964). (C) is not correct. MPEP § 2106.02, under the heading “Affidavit Practice (37 CFR 1.132),” and see In re Brandstadter, 179 USPQ 286 (CCPA 1973). (D) is not correct. MPEP § 2106.02, under the heading “Affidavit Practice (37 CFR 1.132),” and see Hirschfield v. Banner, Commissioner of Patents and Trademarks, 200 USPQ 276, 281 (D.D.C. 1978). (E) is not correct. MPEP § 2106.02, under the heading ‘Referencing Prior Art Documents,” and see In re Budnick, 190 USPQ 422, 424 (CCPA 1976); and In re Gunn, 190 USPQ 402, 406 (CCPA 1976).

{ 5 comments… read them below or add one }

1 MarkNo Gravatar October 15, 2011 at 3:01 pm

I believe that citation of MPEP 2106.02 no longer relates to this problem, and now has now changed to MPEP 2164.06(c). The answer is still correct.

Reply

2 KFNo Gravatar March 11, 2012 at 5:07 pm

Mark is correct. All the headings are the same, just under 2164.06(c). III. Affidavit Practice
V. Arguments of Counsel
IV. Referencing Prior Art Documents

Reply

3 Mom in DCNo Gravatar March 12, 2012 at 9:02 am

Saw this question on March 8 and other enablement/written description problems. Know this!

Reply

4 PotentialNo Gravatar May 9, 2012 at 12:57 am

I remember the answer. But if you really think about it, why would evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone can rebut enablement rejection? Can anyone give me an example in real life? If I invented something, I have the evidence that I spent 300 hours and huge effort of making this machine. By hours and my effort alone, an ordinary skilled in the art will be enabled?

Reply

5 MayteaNo Gravatar August 2, 2015 at 9:32 am

I do not understand why (e) is not a 102 case? I see computer programs are exempt from 102 e, but what is reason for this?

Reply

Leave a Comment

Previous post:

Next post: