Monday, April 26, 2010


  • “To satisfy the plain language of § 112, ¶ 1, [a patentee is] required to provide an adequate enabling disclosure in the specification; it cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification.”
  • A court may consider the following factors “when determining if a disclosure requires undue experimentation: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”
  • See also In re Wands, 858 F.2d 731 (Fed. Cir. 1988).

  • The open claim language chosen by the inventors does not grant them any forgiveness on the scope of required enablement.