“What a bunch of enablers…”

Before starting: I feel compelled to point out once again that I am not reproducing PTO materials in any way… I am summarizing my own rough understanding of the statute, whether right or wrong. I am not a lawyer.

Day 7:

Yes, we worked with the electronic MPEP today.

Yes, we futzed around with the intranet resources.

But the highlight of today was our lecture on 35 USC 112, paragraph 1. There was a lot of material today, and I’m not even going to try to summarize it all, but we did learn a lot of very interesting things.

There are three aspects to 112, p1 that we have to worry about:

1. Written Description

2. Enablement

3. Best mode

Applicant must provide a written description of the invention – that should be obvious. Like I said in a previous post about quid pro quo, if you don’t disclose the invention such that a person of ordinary skill in the art can make and use your invention, you aren’t fulfilling your part of the bargain. But written description is a really low bar to meet.

The next item is enablement… does the specification provide adequate information for the PHOSITA to understand what is claimed? Is everything in the claim defined in the spec, or is it understood in the art?

Finally, best mode. Has applicant disclosed the best way to build or use the invention that they knew of at the time of filing? Not a likely rejection.

One thing I found very interesting about enablement is that it is a very severe rejection. Rejecting on enablement can put a death sentence on an application on the first office action, because if applicant can’t prove that his spec was adequate, he is barred from introducing new matter into the description. Since he can’t fix the non-enabled claims, he has to file a CIP (I think) and go from there, which is costly.

After doing a few exercises on what is an allowable amendment under 112, p1 and going over the intricacies of it, I really understand why some people stay at the PTO for years and maintain enthusiasm for the job. This is work that really engages your whole mind, and challenges you to really think about things. I’m still going over 112, p1 in my head, so I’ll probably post some more about it later.


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