Examining the Specification

by Dennis Crouch

Earlier this month, I posted a short essay about recent enablement cases at the PTAB.  Section 112(a) includes three disclosure requirements: written description; enablement; and best mode.  I would further divide written description into two categories: new matter and Ariad-style.  Thus we get:

  1. New Matter Written Description: Any amendments made to the claims during prosecution must be supported by the originally filed specification.  In particular, the original specification must show ‘possession’ of the newly claimed invention.  During prosecution, this is also captured under 35 U.S.C. 132(a) (“No amendment shall introduce new matter into the disclosure of the invention.”)
  2. Ariad-Style Written Description: Originally filed claims may also lack written description if the four-corners of the specification fail to show the inventor was in possession. The court in Ariad explained that a “a vague functional description” may be insufficient as it likely describes the unpatentable problem rather than a patentable solution.  Ariad Pharmaceuticals et al. v. Eli Lilly and Company, 598 F.3d 1336 (Fed. Cir. 2010) (en banc).
  3. Enablement: The original specification must enable a person of skill in the art to make and use the invention without undue experimentation.

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