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| Authored by: Anonymous on Monday, June 10 2013 @ 05:19 PM EDT |
From the same link, see also the text below, especially the last sentence.
2164.02 Working Example
Compliance with the enablement requirement of 35 U.S.C. 112, first paragraph,
does not turn on whether an example is disclosed. An example may be “working” or
“prophetic.” A working example is based on work actually performed. A prophetic
example describes an embodiment of the invention based on predicted results
rather than work actually conducted or results actually achieved.
An applicant need not have actually reduced the invention to practice prior to
filing. In Gouldv. Quigg, 822 F.2d 1074, 1078, 3 USPQ 2d 1302, 1304 (Fed. Cir.
1987), as of Gould’s filing date, no person had built a light amplifier or
measured a population inversion in a gas discharge. The Court held that “The
mere fact that something has not previously been done clearly is not, in itself,
a sufficient basis for rejecting all applications purporting to disclose how to
do it.” 822 F.2d at 1078, 3 USPQ2d at 1304 (quoting In re Chilowsky, 229 F.2d
457, 461, 108 USPQ 321, 325 (CCPA 1956)).
The specification need not contain an example if the invention is otherwise
disclosed in such manner that one skilled in the art will be able to practice it
without an undue amount of experimentation. In reBorkowski, 422 F.2d 904, 908,
164 USPQ 642, 645 (CCPA 1970).
Lack of a working example, however, is a factor to be considered, especially in
a case involving an unpredictable and undeveloped art. But because only an
enabling disclosure is required, applicant need not describe all actual
embodiments. [ Reply to This | Parent | # ]
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- Interesting.... - Authored by: Anonymous on Monday, June 10 2013 @ 06:06 PM EDT
- Paul was right. - Authored by: Anonymous on Tuesday, June 11 2013 @ 12:00 PM EDT
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