2161 Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
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I. THE SPECIFICATION MUST INCLUDE A WRITTEN DESCRIPTION OF THE INVENTION, ENABLEMENT, AND BEST MODE OF CARRYING OUT THE CLAIMED INVENTION
35 U.S.C. 112(a) (applicable to applications filed on or after September 16, 2012) provides:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements:
- A written description of the invention;
- The manner and process of making and using the invention (the enablement requirement); and
- The best mode contemplated by the inventor of carrying out his invention.
II. THE THREE REQUIREMENTS ARE SEPARATE AND DISTINCT FROM EACH OTHER
The written description requirement is separate and distinct from the enablement requirement.
2161.01 Computer Programming and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
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I. DETERMINING WHETHER THERE IS ADEQUATE WRITTEN DESCRIPTION FOR A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION
The 35 U.S.C. 112(a) or first paragraph of pre-AIA 35 U.S.C. 112 contains a written description requirement that is separate and distinct from the enablement requirement.
Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language (whether or not the functional claim language invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph) but the specification does not sufficiently identify how the invention achieves the claimed function.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.
Computer-implemented inventions are often disclosed and claimed in terms of their functionality.
- This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
- Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied.
II. BEST MODE
The purpose of the best mode requirement is to “restrain inventors from applying for patents while at the same time concealing from the public the preferred embodiments of their inventions which they have in fact conceived.”
- “As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed. . . . [F]low charts or source code listings are not a requirement for adequately disclosing the functions of software.”
III. DETERMINING WHETHER THE FULL SCOPE OF A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS ENABLED
To satisfy the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without “undue experimentation.”
- Functional claim language may render the claims broad when the claim is not limited to any particular structure for performing the claimed function.
- The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.
- The claims in Sitrick were directed to “integrating” or “substituting” a user’s audio signal or visual image into a pre-existing video game or movie.
- While the claims covered both video games and movies, the specification only taught the skilled artisan how to substitute and integrate user images into video games.
- The Federal Circuit held that the specification failed to enable the full scope of the claims because the skilled artisan could not substitute a user image for a preexisting character image in movies without undue experimentation.
- Specifically, the court recognized that one skilled in the art could not apply the teachings of the specification regarding video games to movies, because movies, unlike video games, do not have easily separable character functions.
» 2162 Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
