Law 677 | Patent Law | Spring 2003 The Patent Document I Class Notes: January 21, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

Today’s Agenda The Enablement Requirement The Written Description Requirement Debating the Enablement & W/D Requirements 1/21/03 Law 677 | Spring 2003

The Standards for Patentability A valid patent must be . . . Fully and appropriately described (§ 112) In compliance with statutory bars (§ 102) Novel (§ 102) Nonobvious (§ 103) The work of the inventors (§ 116) Useful (§ 101) Within the appropriate subject matter (§ 101) 1/21/03 Law 677 | Spring 2003

The Enablement Requirement 35 U.S.C. § 112. - Specification 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. . . . 1/21/03 Law 677 | Spring 2003

The Enablement Requirement 35 U.S.C. § 112. - Specification The specification shall contain a [1] written description of the invention, and [2] 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 [3] best mode contemplated by the inventor of carrying out his invention. . . . 1/21/03 Law 677 | Spring 2003

The Enablement Requirement O’Reilly v Morse (1854) Claim 8 (p. 164): “I do not propose to limit myself . . . “The essence of my invention being . . .” Consider: If the enablement requirement has to do with the specification, why the focus on Claim 8? (Is the patent valueless with the loss of Claim 8?) What defect in Claim 8 does the majority object to? (On what philosophical basis, if any, does the objection rest?) How does the dissent respond? (Their theory?) How would you re-write Claim 8 to satisfy the majority? 1/21/03 Law 677 | Spring 2003

The Enablement Requirement The Scope of the Enablement Requirement How might there be said to be two purposes of the enablement requirement? Can you reconcile Morse and the American Bell cases? (p. 172) By what standard should we evaluate the scope of the disclosure? (How does this connect to the twin purposes?) 1/21/03 Law 677 | Spring 2003

The Enablement Requirement In re Glass (CCPA 1974) This rejection is of all claims. What is different here from Morse? What was the problem with the specification? Didn’t the (slightly) subsequent patents support the spec.? What is the date by which disclosure is measured? Is this the right date? (Consider the purposes of Enablement.) Pros and cons? Why would the applicant file an app like this? What would have been the easiest way to avoid this problem? Note a trap: what could the applicant do in response to the PTO rejection? 1/21/03 Law 677 | Spring 2003

The Enablement Requirement The Three Principles of Enablement The scope of disclosure required = scope of the claims. Can you claim more broadly than you disclose? Explain. If some ‘experimentation’ is required to actually make the invention, is the claim enabled? The quantity of disclosure is related to the predictability in the art. Can you rely on ‘state of the art’ for enablement? When should you deposit? Are there risks? The measurement of the disclosure is as of the filing date. What if you haven’t yet “made” your device (reduced it to practice) as of the filing date? 1/21/03 Law 677 | Spring 2003

The Written Description Requirement 35 U.S.C. § 112. - Specification The specification shall contain a [1] written description of the invention, and [2] 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 [3] best mode contemplated by the inventor of carrying out his invention. . . . How does the Written Description requirement differ from enablement? (Statutory clues?) 1/21/03 Law 677 | Spring 2003

The Written Description Requirement Vas-Cath v Mahurkar (Fed. Cir. 1991) (Rich, J.) M wants ‘priority’ from a design patent app. Why? Because of this, what is the court’s real question? How does the court resolve the “range of variation” question? Consider the evidence (p. 221) What does the court say is the true purpose of w/d requirement? What is the “standard”? Is this any different than enablement? 1/21/03 Law 677 | Spring 2003

The Written Description Requirement Gentry Gallery v Berkline (Fed. Cir. 1998) (Lourie, J.) Claims: recliner sofa, controls anywhere Disclosure: recliner sofa, controls on the console Can Gentry Gallery be reconciled with Vas Cath? 1/21/03 Law 677 | Spring 2003

Debating Enablement vs Written Description The Enzo Biochem Cases Enzo I (Fed. Cir., April 2002) (Lourie, J.) Claims to deposited nucleotides insufficient (as a matter of law) to satisfy written description. Is this consistent with Vas Cath? How is this significant doctrinally? Consider: Why does Enzo deposit rather than describe? Why does Enzo claim variations of the material as well? Enzo II (Fed. Cir., July 2002) (Lourie, J.) Claims to deposited nucleotides sufficient to satisfy written description. Enzo III (Fed. Cir., July 2002) (various) (order denying en banc) What do the dissenters say? Do you agree? Will the Court change? (Count the votes.) 1/21/03 Law 677 | Spring 2003

Case Studies: Complex Technology Next Class The Patent Document II Best Mode Case Studies: Complex Technology Inventorship 1/21/03 Law 677 | Spring 2003