Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

The statutory requirements for computer-implemented

inventions are the same as for all inventions, such as the subject matter eligibility

and utility requirements under

35 U.S.C. 101

(see

MPEP §§

2106

and

2107

, respectively), the novelty

requirement of

35

U.S.C. 102

, the nonobviousness requirement of

35 U.S.C. 103

, the

definiteness requirement of

35 U.S.C. 112(b)

or

pre-AIA 35 U.S.C.

112

, second paragraph, and the three separate and distinct

requirements of

35 U.S.C. 112(a)

or

pre-AIA 35 U.S.C.

112

, first paragraph. In addition, claims with

computer-implemented functional claim limitations may invoke

35 U.S.C.

112(f)

or

pre-AIA 35 U.S.C. 112

, sixth

paragraph. See

MPEP §

2181

, subsection II.B, and

§ 2181

, subsection

IV. for information regarding means- (or step-) plus- function limitations.

Even if a claim is not construed as a means-plus-

function limitation under

35 U.S.C. 112(f)

,

computer-implemented functional claim language must still be evaluated for sufficient

disclosure under the written description and enablement requirements of

35 U.S.C.

112(a)

.

I.

DETERMINING WHETHER THERE IS ADEQUATE WRITTEN DESCRIPTION FOR A

COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION

The

35 U.S.C. 112(a)

or first

paragraph of

pre-AIA 35 U.S.C. 112

contains a written description

requirement that is separate and distinct from the enablement requirement.

Ariad Pharm., Inc. v. Eli Lilly & Co.,

598 F.3d 1336, 1340,

94 USPQ2d 1161, 1167 (Fed. Cir. 2010)

(en banc)

. To satisfy the

written description requirement, the specification must describe the claimed

invention in sufficient detail that one skilled in the art can reasonably conclude

that the inventor had possession of the claimed invention at the time of filing.

Reiffin v. Microsoft Corp.,

214 F.3d 1342, 1345, 54 USPQ2d

1915, 1917 (Fed. Cir

3d 1336, 1340,

94 USPQ2d 1161, 1167 (Fed. Cir. 2010)

(en banc)

. To satisfy the

written description requirement, the specification must describe the claimed

invention in sufficient detail that one skilled in the art can reasonably conclude

that the inventor had possession of the claimed invention at the time of filing.

Reiffin v. Microsoft Corp.,

214 F.3d 1342, 1345, 54 USPQ2d

1915, 1917 (Fed. Cir. 2000) (“The purpose of [the written description requirement] is

to ensure that the scope of the right to exclude, as set forth in the claims, does

not overreach the scope of the inventor’s contribution to the field of art as

described in the patent specification”);

LizardTech Inc. v. Earth Resource

Mapping Inc.,

424 F.3d 1336, 1345, 76 USPQ2d 1724, 1732 (Fed. Cir. 2005)

(“Whether the flaw in the specification is regarded as a failure to demonstrate that

the patentee [inventor] possessed the full scope of the invention recited in [the

claim] or a failure to enable the full breadth of that claim, the specification

provides inadequate support for the claim under [

§

112(a)

]”); cf.

id.

(“A claim will not be

invalidated on

[§] 112

grounds simply because

the embodiments of the specification do not contain examples explicitly covering the

full scope of the claim language.”). While “[t]here is no special rule for supporting

a genus by the disclosure of a species,” the Federal Circuit has stated that

“[w]hether the genus is supported vel non depends upon the state of the art and the

nature and breadth of the genus.”

Hynix Semiconductor Inc. v. Rambus

Inc.,

645 F.3d 1336, 1352, 98 USPQ2d 1711, 1724 (Fed. Cir. 2011);

id.

(further explaining that “so long as disclosure of the

species is sufficient to convey to one skilled in the art that the inventor possessed

the subject matter of the genus, the genus will be supported by an adequate written

description.”). See also

Rivera v. Int’l Trade Comm’n,

857 F.3d

1315, 1319-21, 123 USPQ2d 1059, 1061-62 (Fed. Cir

5 F.3d 1336, 1352, 98 USPQ2d 1711, 1724 (Fed. Cir. 2011);

id.

(further explaining that “so long as disclosure of the

species is sufficient to convey to one skilled in the art that the inventor possessed

the subject matter of the genus, the genus will be supported by an adequate written

description.”). See also

Rivera v. Int’l Trade Comm’n,

857 F.3d

1315, 1319-21, 123 USPQ2d 1059, 1061-62 (Fed. Cir. 2017) (affirming the Commission’s

findings that “the specification did not provide the necessary written description

support for the full breadth of the asserted claims,” where the claims were broadly

drawn to a “container . . . adapted to hold brewing material” while the specification

disclosed only a “pod adapter assembly” or “receptacle” designed to hold a “pod”).

Specifically, the specification must describe the

claimed invention in a manner understandable to a person of ordinary skill in the art

in a way that shows that the inventor actually invented the claimed invention at the

time of filing.

Id.;

Ariad,

598 F.3d at 1351, 94 USPQ2d at 1172. The function of the

written description requirement is to ensure that the inventor had possession of the

specific subject matter later claimed as of the filing date of the application relied

on; how the specification accomplishes this is not material.

In re

Herschler,

591 F.2d 693, 700-01, 200 USPQ 711, 717 (CCPA 1979), further

reiterated in

In re Kaslow,

707 F.2d 1366, 217 USPQ 1089 (Fed.

Cir. 1983); see also

MPEP §§ 2163

-

2163.04

.

The written description requirement of

35

U.S.C. 112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph, applies to all claims including original claims that are part of the

disclosure as filed.

Ariad,

598 F.3d at 1349, 94 USPQ2d at 1170.

As stated by the Federal Circuit, “[a]lthough many original claims will satisfy the

written description requirement, certain claims may not.”

Id.

at

1349, 94 USPQ2d at 1170-71; see also

LizardTech, Inc. v. Earth Res. Mapping,

Inc.,

424 F.3d 1336, 1343-46, 76 USPQ2d 1724, 1730-33 (Fed. Cir

ncluding original claims that are part of the

disclosure as filed.

Ariad,

598 F.3d at 1349, 94 USPQ2d at 1170.

As stated by the Federal Circuit, “[a]lthough many original claims will satisfy the

written description requirement, certain claims may not.”

Id.

at

1349, 94 USPQ2d at 1170-71; see also

LizardTech, Inc. v. Earth Res. Mapping,

Inc.,

424 F.3d 1336, 1343-46, 76 USPQ2d 1724, 1730-33 (Fed. Cir. 2005);

Regents of the Univ. of Cal. v. Eli Lilly & Co.,

119 F.3d

1559, 1568, 43 USPQ2d 1398, 1405-06 (Fed. Cir. 1997)(“The description requirement of

the patent statute requires a description of an invention, not an indication of a

result that one might achieve if one made that invention.”). Problems satisfying the

written description requirement for original claims often occur when claim language

is generic or functional, or both.

Ariad,

593 F.3d at 1349, 94

USPQ2d at 1171 (“The problem is especially acute with genus claims that use

functional language to define the boundaries of a claimed genus. In such a case, the

functional claim may simply claim a desired result, and may do so without describing

species that achieve that result. But the specification must demonstrate that the

applicant [inventor] has made a generic invention that achieves the claimed result

and do so by showing that the applicant [inventor] has invented species sufficient to

support a claim to the functionally-defined genus.”).

For instance, generic claim language in the original

disclosure does not satisfy the written description requirement if it fails to

support the scope of the genus claimed.

Ariad,

598 F.3d at

1349-50, 94 USPQ2d at 1171 (“[A]n adequate written description of a claimed genus

requires more than a generic statement of an invention’s boundaries.”) (citing

Eli Lilly,

119 F.3d at 1568, 43 USPQ2d at 1405-06);

Enzo Biochem, Inc. v. Gen-Probe, Inc.,

323 F.3d 956, 968, 63

USPQ2d 1609, 1616 (Fed. Cir

description requirement if it fails to

support the scope of the genus claimed.

Ariad,

598 F.3d at

1349-50, 94 USPQ2d at 1171 (“[A]n adequate written description of a claimed genus

requires more than a generic statement of an invention’s boundaries.”) (citing

Eli Lilly,

119 F.3d at 1568, 43 USPQ2d at 1405-06);

Enzo Biochem, Inc. v. Gen-Probe, Inc.,

323 F.3d 956, 968, 63

USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in

ipsis verbis

in the original specification did not satisfy the

written description requirement because it failed to support the scope of the genus

claimed);

Fiers v. Revel,

984 F.2d 1164, 1170, 25 USPQ2d 1601,

1606 (Fed. Cir. 1993) (rejecting the argument that “only similar language in the

specification or original claims is necessary to satisfy the written description

requirement”).

The Federal Circuit has explained that a

specification cannot always support expansive claim language and satisfy the

requirements of 35 U.S.C. 112 “merely by clearly describing one embodiment of the

thing claimed.”

LizardTech v. Earth Resource Mapping, Inc.,

424

F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person

skilled in the art would understand the inventor to have invented, and been in

possession of, the invention as broadly claimed. In

LizardTech,

claims to a generic method of making a seamless discrete wavelet transformation (DWT)

were held invalid under 35 U.S.C. 112, first paragraph, because the specification

taught only one particular method for making a seamless DWT and there was no evidence

that the specification contemplated a more generic method. “[T]he description of one

method for creating a seamless DWT does not entitle the inventor . . . to claim any

and all means for achieving that objective.”

LizardTech,

424 F.3d

at 1346, 76 USPQ2d at 1733

S.C. 112, first paragraph, because the specification

taught only one particular method for making a seamless DWT and there was no evidence

that the specification contemplated a more generic method. “[T]he description of one

method for creating a seamless DWT does not entitle the inventor . . . to claim any

and all means for achieving that objective.”

LizardTech,

424 F.3d

at 1346, 76 USPQ2d at 1733.

Similarly, original claims may lack written

description when the claims define the invention in functional language specifying a

desired result but the specification does not sufficiently describe how the function

is performed or the result is achieved. For software, this can occur when the

algorithm or steps/procedure for performing the computer function are not explained

at all or are not explained in sufficient detail (simply restating the function

recited in the claim is not necessarily sufficient). In other words, the algorithm or

steps/procedure taken to perform the function must be described with sufficient

detail so that one of ordinary skill in the art would understand

how

the inventor intended the function to be performed. See

MPEP §§

2163.02

and

2181

, subsection IV.

The level of detail required to satisfy the written

description requirement varies depending on the nature and scope of the claims and on

the complexity and predictability of the relevant technology.

Ariad,

598 F.3d at 1351, 94 USPQ2d at 1172;

Capon v.

Eshhar,

418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir.

2005). Computer-implemented inventions are often disclosed and claimed in terms of

their functionality. For computer-implemented inventions, the determination of the

sufficiency of disclosure will require an inquiry into the sufficiency of both the

disclosed hardware and the disclosed software due to the interrelationship and

interdependence of computer hardware and software

78, 1083-84 (Fed. Cir.

2005). Computer-implemented inventions are often disclosed and claimed in terms of

their functionality. For computer-implemented inventions, the determination of the

sufficiency of disclosure will require an inquiry into the sufficiency of both the

disclosed hardware and the disclosed software due to the interrelationship and

interdependence of computer hardware and software. The critical inquiry is whether

the disclosure of the application relied upon reasonably conveys to those skilled in

the art that the inventor had possession of the claimed subject matter as of the

filing date.

Vasudevan Software, Inc. v. MicroStrategy, Inc.,

782

F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing

Ariad Pharm., Inc. V. Eli Lilly

& Co,

598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in

the context of determining possession of a claimed means of accessing disparate

databases).

When examining computer-implemented functional claims,

examiners should determine whether the specification discloses the computer and the

algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed

function in sufficient detail such that one of ordinary skill in the art can

reasonably conclude that the inventor possessed the claimed subject matter at the

time of filing. An algorithm is defined, for example, as “a finite sequence of steps

for solving a logical or mathematical problem or performing a task.” Microsoft

Computer Dictionary (5th ed., 2002). Applicant may “express that algorithm in any

understandable terms including as a mathematical formula, in prose, or as a flow

chart, or in any other manner that provides sufficient structure.”

Finisar

Corp. v. DirecTV Grp., Inc.,

523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623

(Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in

the art could write a program to achieve the claimed function because the

specification must explain how the inventor intends to achieve the claimed function

to satisfy the written description requirement

t provides sufficient structure.”

Finisar

Corp. v. DirecTV Grp., Inc.,

523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623

(Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in

the art could write a program to achieve the claimed function because the

specification must explain how the inventor intends to achieve the claimed function

to satisfy the written description requirement. See, e.g.,

Vasudevan

Software, Inc. v. MicroStrategy, Inc.,

782 F.3d 671, 681-683, 114 USPQ2d

1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant

of summary judgment of invalidity for lack of adequate written description where

there were genuine issues of material fact regarding “whether the specification

show[ed] possession by the inventor of how accessing disparate databases is

achieved”). If the specification does not provide a disclosure of the computer and

algorithm in sufficient detail to demonstrate to one of ordinary skill in the art

that the inventor possessed the invention a rejection under

35 U.S.C.

112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph, for lack of written description must be made. For more information

regarding the written description requirement, see

MPEP § 2162

-

§

2163.07(b)

. If the specification does not provide a

disclosure of sufficient corresponding structure, materials, or acts that perform the

entire claimed function of a means- (or step-) plus- function limitation in a claim

under

35

U.S.C. 112(f)

or the sixth paragraph of

pre-AIA 35 U.S.C.

112

, "the applicant has in effect failed to particularly point

out and distinctly claim the invention" as required by the

35 U.S.C.

112(b)

[or the second paragraph of

pre-AIA 35 U.S.C.

112

].

In re Donaldson Co.,

16 F.3d 1189,

1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (

en banc

). A rejection

under

35

U.S.C. 112(b)

or the second paragraph of

pre-AIA 35 U.S.C.

112

must be made in addition to the written description

rejection. See also

MPEP § 2181

, subsection II.B.2(a).

II

tly claim the invention" as required by the

35 U.S.C.

112(b)

[or the second paragraph of

pre-AIA 35 U.S.C.

112

].

In re Donaldson Co.,

16 F.3d 1189,

1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (

en banc

). A rejection

under

35

U.S.C. 112(b)

or the second paragraph of

pre-AIA 35 U.S.C.

112

must be made in addition to the written description

rejection. See also

MPEP § 2181

, subsection II.B.2(a).

II.

BEST MODE

The purpose of the best mode requirement is to “restrain inventors

from applying for patents while at the same time concealing from the public the

preferred embodiments of their inventions which they have in fact conceived.”

In re Gay,

309 F.2d 769, 772, 135 USPQ 311, 315 (CCPA 1962).

Only evidence of concealment, “whether accidental or intentional,” is considered in

judging the adequacy of the disclosure for compliance with the best mode requirement.

Spectra-Physics, Inc. v. Coherent, Inc.,

827 F.2d 1524, 1535, 3

USPQ2d 1737, 1745 (Fed. Cir. 1987). “That evidence, in order to result in affirmance

of a best mode rejection, must tend to show that the

quality

of an

[inventor's] best mode disclosure is so poor as to effectively result in

concealment.”

In re Sherwood,

613 F.2d 809, 816, 204 USPQ 537, 544

(CCPA 1980)(emphasis omitted);

White Consol. Indus. v. Vega Servo-Control

Inc.,

214 USPQ 796, 824 (S.D. Mich. 1982),

aff’d on related

grounds,

713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983); see also

MPEP §§

2165

-

2165.04

.

There are two factual inquiries to be made in determining whether a

specification satisfies the best mode requirement. First, there must be a subjective

determination as to whether the inventor knew of a best mode of practicing the

invention at the time the application was filed. Second, if the inventor had a best

mode of practicing the invention in mind, there must be an objective determination as

to whether that best mode was disclosed in sufficient detail to allow one skilled in

the art to practice it.

Fonar Corp. v. Gen. Elect. Co.,

107 F.3d

1543, 41 USPQ2d 1801, 1804 (Fed. Cir

entor knew of a best mode of practicing the

invention at the time the application was filed. Second, if the inventor had a best

mode of practicing the invention in mind, there must be an objective determination as

to whether that best mode was disclosed in sufficient detail to allow one skilled in

the art to practice it.

Fonar Corp. v. Gen. Elect. Co.,

107 F.3d

1543, 41 USPQ2d 1801, 1804 (Fed. Cir. 1997);

Chemcast Corp. v. Arco

Indus.,

913 F.2d 923, 927-28, 16 USPQ2d 1033, 1036 (Fed. Cir. 1990). “As

a general rule, where software constitutes part of a best mode of carrying out an

invention, description of such a best mode is satisfied by a disclosure of the

functions of the software. This is because, normally, writing code for such software

is within the skill of the art, not requiring undue experimentation, once its

functions have been disclosed. . . . [F]low charts or source code listings are not a

requirement for adequately disclosing the functions of software.”

Fonar

Corp.,

107 F.3d at 1549, 41 USPQ2d at 1805 (citations omitted).

III.

DETERMINING WHETHER THE FULL SCOPE OF A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM

LIMITATION IS ENABLED

To satisfy the enablement requirement of

35

U.S.C. 112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph, the specification must teach those skilled in the art how to make and use

the full scope of the claimed invention without “undue experimentation.” See, e.g.,

In re Wright,

999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.

Cir. 1993);

In re Wands,

858 F.2d 731, 736-37, 8 USPQ2d 1400, 1402

(Fed. Cir. 1988)

tisfy the enablement requirement of

35

U.S.C. 112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph, the specification must teach those skilled in the art how to make and use

the full scope of the claimed invention without “undue experimentation.” See, e.g.,

In re Wright,

999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.

Cir. 1993);

In re Wands,

858 F.2d 731, 736-37, 8 USPQ2d 1400, 1402

(Fed. Cir. 1988). In

In re Wands,

the court set forth the

following factors to consider when determining whether undue experimentation is

needed: (1) the breadth of the claims; (2) the nature of the invention; (3) the state

of the prior art; (4) the level of one of ordinary skill; (5) the level of

predictability in the art; (6) the amount of direction provided by the inventor; (7)

the existence of working examples; and (8) the quantity of experimentation needed to

make or use the invention based on the content of the disclosure.

Wands,

858 F.2d at 737, 8 USPQ2d 1404. The undue experimentation

determination is not a single factual determination; rather, it is a conclusion

reached by weighing all the factual considerations.

Id.

All questions of enablement under

35 U.S.C.

112(a)

are evaluated against the claimed subject matter with

the focus of the examination inquiry being whether everything within the scope of the

claim is enabled. Accordingly, examiners should determine what each claim recites and

what subject matter is encompassed by the claim when the claim is considered as a

whole and not analyze the claim elements individually.

When basing a rejection on the failure of the applicant’s disclosure

to meet the enablement provisions of

35 U.S.C. 112(a)

or the first

paragraph of

pre-AIA 35 U.S.C. 112

, USPTO personnel must establish on the

record a

reasonable basis

for questioning the adequacy of the

disclosure to enable a person of ordinary skill in the art to make and use the

claimed invention without resorting to

undue experimentation

rejection on the failure of the applicant’s disclosure

to meet the enablement provisions of

35 U.S.C. 112(a)

or the first

paragraph of

pre-AIA 35 U.S.C. 112

, USPTO personnel must establish on the

record a

reasonable basis

for questioning the adequacy of the

disclosure to enable a person of ordinary skill in the art to make and use the

claimed invention without resorting to

undue experimentation

. See

In re Brown,

477 F.2d 946, 177 USPQ 691 (CCPA 1973);

In re Ghiron,

442 F.2d 985, 169 USPQ 723 (CCPA 1971). Once

USPTO personnel have advanced a reasonable basis for questioning the adequacy of the

disclosure, it becomes incumbent on the applicant to rebut that challenge and

factually demonstrate that the application disclosure is sufficient. See

In

re Doyle,

482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973);

In re Scarbrough,

500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA

1974);

In re Ghiron, supra

; see also

MPEP §§ 2164

-

2164.08(c)

.

When a claim is not limited to any particular

structure for performing a recited function and does not invoke

35 U.S.C.

112(f)

, any claim language reciting the ability to perform a

function per se would typically be construed broadly to cover any and all embodiments

that perform the recited function. Because such a claim encompasses all devices or

structures that perform the recited function, there is a concern regarding whether

the applicant's disclosure sufficiently enables the full scope of protection sought

by the claim.

In re Swinehart,

439 F.2d 210, 213, 169 USPQ 226,

229 (CCPA 1971);

AK Steel Corp. v. Sollac,

344 F.3d 1234, 1244, 68

USPQ2d 1280, 1287 (Fed. Cir. 2003);

In re Moore,

439 F.2d 1232,

1236, 169 USPQ 236, 239 (CCPA 1971). Applicants who present broad claim language must

ensure the claims are fully enabled. Specifically, the scope of the claims must be

less than or equal to the scope of the enablement provided by the specification.

Sitrick v. Dreamworks, LLC,

516 F.3d 993, 999, 85 USPQ2d 1826,

1830 (Fed. Cir

1244, 68

USPQ2d 1280, 1287 (Fed. Cir. 2003);

In re Moore,

439 F.2d 1232,

1236, 169 USPQ 236, 239 (CCPA 1971). Applicants who present broad claim language must

ensure the claims are fully enabled. Specifically, the scope of the claims must be

less than or equal to the scope of the enablement provided by the specification.

Sitrick v. Dreamworks, LLC,

516 F.3d 993, 999, 85 USPQ2d 1826,

1830 (Fed. Cir. 2008) (“The scope of the claims must be less than or equal to the

scope of the enablement to ensure that the public knowledge is enriched by the patent

specification to a degree at least commensurate with the scope of the claims.”

(quotation omitted)).

For example, the claims in

Sitrick

were directed to “integrating” or “substituting” a user’s audio signal or visual

image into a pre-existing video game or movie. While the claims covered both video

games and movies, the specification only taught the skilled artisan how to substitute

and integrate user images into video games. The Federal Circuit held that the

specification failed to enable the full scope of the claims because the skilled

artisan could not substitute a user image for a preexisting character image in movies

without undue experimentation. Specifically, the court recognized that one skilled in

the art could not apply the teachings of the specification regarding video games to

movies, because movies, unlike video games, do not have easily separable character

functions. Because the specification did not teach how the substitution and

integration of character functions for a user image would be accomplished in movies,

the claims were not enabled.

Sitrick,

516 F.3d at 999-1001, 85

USPQ2d at 1830-32.

In

MagSil Corp. v. Hitachi Global Storage

Techs., Inc.

687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir

s, unlike video games, do not have easily separable character

functions. Because the specification did not teach how the substitution and

integration of character functions for a user image would be accomplished in movies,

the claims were not enabled.

Sitrick,

516 F.3d at 999-1001, 85

USPQ2d at 1830-32.

In

MagSil Corp. v. Hitachi Global Storage

Techs., Inc.

687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012), the

Federal Circuit stated that “a patentee chooses broad claim language at the peril of

losing any claim that cannot be enabled across its full scope of coverage,” finding

“one skilled in the art could not have taken the disclosure in the specification

regarding ‘change in the resistance by at least 10% at room temperature’ and achieved

a change in resistance in the full scope of that term without undue experimentation.”

687 F.3d at 1381-82, 103 USPQ2d at 1771. “Thus, the specification enabled a marginal

advance over the prior art, but did not enable at the time of filing a tunnel

junction of resistive changes reaching even up to 20%, let alone the more recent

achievements above 600%.” The court held that the “claims [were] invalid for lack of

enablement because their broad scope [was] not reasonably supported by the scope of

enablement in the specification.” 687 F.3d at 1381-1382, 1384, 103 USPQ2d at 1771,

1772, 1774 (“MagSil did not fully enable its broad claim scope. Therefore, it cannot

claim an exclusive right to exclude later tri-layer tunnel junctions that greatly

exceed a 10% resistive change.”). See also

Convolve, Inc. v. Compaq Computer

Corp.,

527 Fed. App'x 910, 931 (Fed. Cir. 2013) (non-precedential),

quoting

MagSil Corp.

)(affirming grant of summary judgment of

invalidity due to lack of enablement where the patentee “[b]y choosing such broad

claim language, ... put itself ‘at the peril of losing any claim that cannot be

enabled across its full scope of coverage.’”).

The specification need not teach what is well known in

the art

orp.,

527 Fed. App'x 910, 931 (Fed. Cir. 2013) (non-precedential),

quoting

MagSil Corp.

)(affirming grant of summary judgment of

invalidity due to lack of enablement where the patentee “[b]y choosing such broad

claim language, ... put itself ‘at the peril of losing any claim that cannot be

enabled across its full scope of coverage.’”).

The specification need not teach what is well known in

the art. However, applicant cannot rely on the knowledge of one skilled in the art to

supply information that is required to enable the novel aspect of the claimed

invention when the enabling knowledge is in fact not known in the art.

ALZA

Corp. v. Andrx Pharms., LLC,

603 F.3d 935, 941, 94 USPQ2d 1823, 1827

(Fed. Cir. 2010) (“ALZA was 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.”);

Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc.,

501 F.3d 1274,

1283, 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007) (“Although the knowledge of one

skilled in the art is indeed relevant, the novel aspect of an invention must be

enabled in the patent.”). The Federal Circuit has stated that “‘[i]t is the

specification, not the knowledge of one skilled in the art, that must supply the

novel aspects of an invention in order to constitute adequate enablement.’”

Auto. Technologies,

501 F.3d at 1283, 84 USPQ2d at 1115

(quoting

Genentech, Inc. v. Novo Nordisk A/S,

108 F.3d 1361, 1366,

42 USPQ2d 1001, 1005 (Fed. Cir. 1997)). See also

Idenix Pharms. LLC v.

Gilead Scis. Inc.,

941 F.3d 1149, 1159-61, 2019 USPQ 2d 415844 (Fed.

Cir. 2019). The rule that a specification need not disclose what is well known in the

art is “merely a rule of supplementation, not a substitute for a basic enabling

disclosure.”

Genentech,

108 F.3d at 1366, 42 USPQ2d 1005; see also

ALZA Corp.,

603 F.3d at 940-41, 94 USPQ2d at 1827

Fed. Cir. 1997)). See also

Idenix Pharms. LLC v.

Gilead Scis. Inc.,

941 F.3d 1149, 1159-61, 2019 USPQ 2d 415844 (Fed.

Cir. 2019). The rule that a specification need not disclose what is well known in the

art is “merely a rule of supplementation, not a substitute for a basic enabling

disclosure.”

Genentech,

108 F.3d at 1366, 42 USPQ2d 1005; see also

ALZA Corp.,

603 F.3d at 940-41, 94 USPQ2d at 1827. Therefore,

the specification must contain the information necessary to enable the novel aspects

of the claimed invention.

Id.

at 941, 94 USPQ2d at 1827;

Auto. Technologies,

501 F.3d at 1283-84, 84 USPQ2d at 1115

(“[T]he ‘omission of minor details does not cause a specification to fail to meet the

enablement requirement. However, when there is no disclosure of any specific starting

material or of any of the conditions under which a process can be carried out, undue

experimentation is required.’”) (quoting

Genentech,

108 F.3d at

1366, 42 USPQ2d at 1005). For instance, in

Auto. Technologies,

the

claim limitation “means responsive to the motion of said mass” was construed to

include both mechanical side impact sensors and electronic side impact sensors for

performing the function of initiating an occupant protection apparatus.

Auto. Technologies,

501 F.3d at 1282, 84 USPQ2d at 1114. The

specification did not include any discussion of the details or circuitry involved in

the electronic side impact sensor and thus, failed to apprise one of ordinary skill

how to make and use the electronic sensor. Because the novel aspect of the invention

was side impact sensors, the patentee could not rely on the knowledge of one skilled

in the art to supply the missing information.

Auto. Technologies,

501 F.3d at 1283, 84 USPQ2d at 1114.

Not everything necessary to practice the invention

need be disclosed.

Trs. of Bos. Univ. v. Everlight Elecs. Co.,

LTD.,

896 F.3d 1357, 1364, 127 USPQ2d 1609, 1614 (Fed. Cir

cause the novel aspect of the invention

was side impact sensors, the patentee could not rely on the knowledge of one skilled

in the art to supply the missing information.

Auto. Technologies,

501 F.3d at 1283, 84 USPQ2d at 1114.

Not everything necessary to practice the invention

need be disclosed.

Trs. of Bos. Univ. v. Everlight Elecs. Co.,

LTD.,

896 F.3d 1357, 1364, 127 USPQ2d 1609, 1614 (Fed. Cir. 2018)

(explaining that while “the specification must enable the full scope of the claimed

invention[,]” “[t]his is not to say that the specification must expressly spell out

every possible iteration of every claim.”). For instance, “‘a specification need not

disclose what is well known in the art.’”

Id.

(quoting

Genentech, Inc.v. Novo Nordisk A/S,

108 F.3d 1361, 1366, 42

USPQ2d 1001, 1005 (Fed. Cir. 1997)); see also

AK Steel Corp. v. Sollac &

Ugine,

344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003). This

is of particular importance with respect to computer-implemented inventions due to

the high level of skill in the art and the similarly high level of predictability in

generating programs to achieve an intended result without undue experimentation. See

MPEP §

2164.08

.

The Federal Circuit has repeatedly held that the

specification must teach those skilled in the art how to make and use the full scope

of the claimed invention without undue experimentation. See

Trs. of Bos.

Univ.,

896 F.3d at 1364 (“‘The scope of enablement . . . is that which

is disclosed in the specification plus the scope of what would be known to one of

ordinary skill in the art without undue experimentation.’” (quoting

Nat’l

Recovery Techs., Inc. v. Magnetic Separation Sys., Inc.,

166 F.3d 1190,

1196, 49 USPQ2d 1671, 1676 (Fed. Cir. 1999))). For example, in

Sitrick v.

Dreamworks, LLC,

516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2008), the

claims at issue were directed to “integrating” or “substituting” a user’s audio

signal or visual image into a pre-existing video game or movie.

Id.

at 995-97

imentation.’” (quoting

Nat’l

Recovery Techs., Inc. v. Magnetic Separation Sys., Inc.,

166 F.3d 1190,

1196, 49 USPQ2d 1671, 1676 (Fed. Cir. 1999))). For example, in

Sitrick v.

Dreamworks, LLC,

516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2008), the

claims at issue were directed to “integrating” or “substituting” a user’s audio

signal or visual image into a pre-existing video game or movie.

Id.

at 995-97. While the claims covered both video games and

movies, the specification only taught the skilled artisan how to substitute and

integrate user images into video games.

Id.

at 1000. The Federal

Circuit held that the specification “did not enable the full scope of the asserted

claims” because “one skilled in the art could not take the disclosure in the

specification with respect to substitution or integration of user images in video

games and substitute a user image for a pre- existing character image in movies

without undue experimentation.”

Id.

A rejection under

35 U.S.C.

112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph for lack of enablement must be made when the specification does not enable

the full scope of the claim. USPTO personnel should establish a reasonable basis to

question the enablement provided for the claimed invention and provide reasons for

the uncertainty of the enablement. For more information regarding the enablement

requirement, see

MPEP

§§ 2164.01(a)

-

2164.08(c)

, especially,

MPEP §

2164.06(c)

for examples of computer programming cases. See

also

MPEP §

2181

, subsection IV.

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