Enablement Rejections During Prosecution

Enablement rejections are less common that 102 and 103 rejections, but can be more difficult in that failure to enable the innovative aspects of an invention can be a fatal flaw. Therefore, it is important to understand the procedures that apply to enablement rejections to ensure that the applicant is taking advantage of every tool in their toolbox when responding to such rejections.

The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation. Whether undue experimentation is required is a legal conclusion reached by weighing several underlying factual inquiries as forth in In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988).

As an initial matter, the Office bears the burden to establish lack of enablement. However, the PTAB tends to be somewhat lax in strictly allocating the burden and often makes statements about how the applicant has failed to prove that the examiner has erred, or has failed to prove that the application is enabling. While incorrect, applicants should be well aware of the PTAB’s tendencies and ensure that the briefs correctly frame the issues and allocates the burdens explicitly.

Sometimes the enablement issue comes down to the Examiner alleging that something in the claims is simply impossible, or unworkable, often based on a claim interpretation that is overly narrow. A recent PTAB example of this can be found in 14/557,688. The examiner in that case alleged that a claimed element drawn to connecting opposite ends of a "shaft” was not enabled because in the specification, there was a clutch between the opposite ends and thus it was impossible for the same shaft to be connected as claimed. In the end, the PTAB agreed with the applicant that, in light of the specification, such a narrow interpretation was incorrect as the indefinite article “a” did not mean a one-piece shaft and so there was no issue with enablement because the applicant disclosed a two-piece shaft.

In other cases, the Wands factors come into play. In cases where the examiner alleges that undue experimentation is required, the examiner must use the Wands factors, along with an explanation as to how those factors support the conclusion that the claims are not enabled. A recent example where the Office goes through each factor, and the PTAB agrees, is in SN 14/198,690. In this case (a Sony patent application directed to image processing), the claims required an “extrapolation section configured to identify a level of extrapolation reliability that indicates accuracy of the extrapolation.” The examiner asserted, and the PTAB agreed, that when considering each of the Wands factors, while extrapolation was well known, extrapolation reliability was not and no direction was provided in the specification as to how to form the extrapolation value or how to map the value as claimed. Here, the applicant never really argued each factor in their appeal brief, and so it was easy for the PTAB to affirm the rejection.

Of course, the examiner must actually consider the teachings of the Specification and the Wands factors, especially if the applicant traverses the finding of undue experimentation. See the appeal by Nintendo in 12/492,683. The PTAB reversed the enablement rejections because the Examiner did not address the specification's enabling support for claims or the Wands factors, e.g., "the amount of direction or guidance presented" and "the presence or absence of working examples." In such a case, the PTAB confirmed that the Examiner has not adequately explained why those skilled in the art would have to engage in undue experimentation to practice the claimed invention. Another example case, with a well-written brief, is SN 14/473,656 to Illinois Tool Works for a laminate assembly invention. The examiner in that case listed almost every rejection in the book (enablement, written description, anticipation, obviousness, definiteness, …), but did not explain how the Wands factors were weighed (as it is not enough to just list them out). The PTAB explained that the examiner’s analysis does not convey why any particular factor supports a finding that undue experimentation would have been required.

So, while this post touches on a few of the important issues that can arise in dealing with an enablement rejection during prosecution, the best preparation is during the initial drafting of the specification to ensure that the specification does not create an opportunity for the examiner to form a convincing enablement rejection.