35 U.S.C. 112:
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Enabling disclosure:
- The specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation.
- It must be consistent with published information.
- Enablement for the claims in a utility application is found in specification preceding the claims, as opposed to being in the claims.
- The claims do not provide their own enablement.
- The lack of necessity to theorize or explain the failures does not alleviate the inventor from complying with 35 U.S.C. 112, first paragraph by providing an enabling disclosure that is commensurate in scope with the claims.
- 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.
- Affirmance of a best mode rejection must show that the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment.
This law prevents an applicant from claiming subject matter that was not described in the application as filed, and the proscription against the introduction of new matter in a patent application serves to prevent an applicant from adding to the informational content of a patent application after it is filed.
Filing dates and the state of art:
- An applicant cannot use a patent to the prove state of art for purpose of satisfying the enablement requirement if the patent has an issue date later than the effective filing date of the application.
- A later dated publication cannot be used to enable an earlier dated application.
Undue experimentation:
- The claimed invention must be enabled so that any person skilled in the art can make and use the invention without undue experimentation.
- The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art on how to both make and use the claimed invention.
The best mode requirement keeps applicants from obtaining patent protection without making a full disclosure as required by the statute.
Facts about best mode:
- A specific example is not required.
- The best mode may be represented by a preferred range of conditions or a group of reactants.
- The best mode may be represented by a preferred range of conditions or a group of reactants.
- A designation as best mode is not required.
- The disclosure only needs to include the best mode.
- There is no requirement to update the best mode.
- If the best mode is not disclosed in the application, such a defect cannot be amended by adding any new matter.
35 U.S.C. 112, 4th paragraph:
- A dependent claim cannot be broader than the claim from which it depends.
- Up to 300 amps includes 0 to 300 amps.
- Example: if the specification discloses a 100-300 amp range the dependent claim is broader.
- Example: if the specification discloses a 100-300 amp range the dependent claim is broader.
Open-ended numerical ranges may render the claim indefinite:
- The term “up to” includes zero as a lower limit.
A claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth paragraph if it meets the following 3-prong analysis:
- The claim limitations must use the phrase “means for” or “step for”.
The “means for” or “step for” must be modified by functional language
- The phrase “means for” or “step for” must not be modified by structure, material or acts for achieving the specified function.
If an applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, the applicant must either:
- Amend the claim to include the phrase “means for” or “step for” in accordance with these guidelines.
- -or-
- -or-
- Show that even though the phrase “means for” or “step for” is not used, the claim limitation is written as a function to be performed and does not provide any structure, material, or acts which would preclude application of 35 U.S.C. 112, sixth paragraph.
Transitional phrases frequently used in claims and their meanings:
» Comprising:- Is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
- “Including” and “characterized by” are synonymous with comprising.
» Consisting essentially of:
- Limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention.
» Consisting of:
- Cannot add an element or step, equal to comprising.
- The phrase “consisting of” excludes any step not specified in the claim.
- Claim that depends from a claim which “consisting of” the recited steps cannot add a step.
Inherency:
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device.
Enabling references:
- The level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue.
- It does not matter whether the prior art reference is a U.S. patent, foreign patent, printed publication or other.
- A reference contains an enabling disclosure if the public was in possession of the claimed invention before the date of the invention.
Publicly accessible:
Prior art disclosures on the internet are thought of as publicly available once the item was posted, if there is no posting date, it cannot be relied upon as prior art, but it may be relied upon to provide evidence regarding the state of the art.
One need not prove someone actually looked at a publication when that publication is publicly accessible.
A printed publication has been made available to the extent that persons interested and ordinarily skilled in the subject matter or art, who exercise reasonable diligence, can locate it.
Anticipation of ranges:
When a claim reciting ranges covers several compositions, the claim is anticipated if one of them is in the prior art.
