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| Authored by: Anonymous on Monday, June 10 2013 @ 02:30 PM EDT |
MPEP section 2164 The Enablement Requirement [R-2]
The enablement requirement refers to the requirement of 35 U.S.C. 112, first
paragraph that the specification describe how to make and how to use the
invention. The invention that one skilled in the art must be enabled to make and
use is that defined by the claim(s) of the particular application or patent.
The purpose of the requirement that the specification describe the invention in
such terms that one skilled in the art can make and use the claimed invention is
to ensure that the invention is communicated to the interested public in a
meaningful way. The information contained in the disclosure of an application
must be sufficient to inform those skilled in the relevant art how to both make
and use the claimed invention.
> However, to comply with 35 U.S.C. 112, first paragraph, it is not necessary
to “enable one of ordinary skill in the art to make and use a perfected,
commercially viable embodiment absent a claim limitation to that effect.” CFMT,
Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed.
Cir. 2003) (an invention directed to a general system to improve the cleaning
process for semiconductor wafers was enabled by a disclosure showing
improvements in the overall system). < Detailed procedures for making and
using the invention may not be necessary if the description of the invention
itself is sufficient to permit those skilled in the art to make and use the
invention. A patent claim is invalid if it is not supported by an enabling
disclosure.
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.
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