Friday, August 14, 2009

Hypothetical Claims for Determining Enablement

Determining Whether the “Full Scope” of Claims Is Enabled: The Need for Hypothetical Closed Claims

When assessing whether a patent has fulfilled the enablement requirement of section 112, it is the “full scope” of the claims that must be enabled. See Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (“The full scope of the claimed invention must be enabled.”). This standard, however, overstates the obligation for open-ended claims. Open-ended claims have, in theory, a virtually unlimited scope since they encompass anything that includes the limitations even if additional unclaimed features are also present. Therefore, it is not actually possible for the full scope of any open-ended claim to be enabled. There will always be an additional feature that would fall within the scope of the claim that the specification would never mention and would not be within the grasp of a person of ordinary skill in the art.

To be more precise, then, the enablement standard for open-ended claims should first assume that such claims are closed claims, and then determine whether the full scope of those hypothetical claims has been enabled. This would more accurately reflect the standard as applied in practice and would be the only realistic requirement that could be imposed on inventors.