Sufficiency of Disclosure

See

MPEP

§ 2164

-

§ 2164.08(c)

for guidance in

determining whether the specification provides an enabling disclosure in compliance with

35 U.S.C.

112(a)

or pre-AIA 35 U.S.C. 112, first paragraph.

Once the examiner has established a

prima facie

case

of lack of enablement, the burden falls on the applicant to present persuasive

arguments, supported by suitable proofs where necessary, that one skilled in the art

would have been able to make and use the claimed invention using the disclosure as a

guide.

In re Brandstadter,

484 F.2d 1395, 179 USPQ 286 (CCPA 1973).

Evidence to supplement a specification which on its face appears deficient under

35 U.S.C.

112

must establish that the information which must be read into

the specification to make it complete would have been known to those of ordinary skill

in the art.

In re Howarth,

654 F.2d 103, 210 USPQ 689 (CCPA 1981)

(copies of patent specifications which had been opened for inspection in Rhodesia,

Panama, and Luxembourg prior to the U.S. filing date of the applicant were not

sufficient to overcome a rejection for lack of enablement under

35 U.S.C.

112(a)

or

pre-AIA 35 U.S.C. 112

, first

paragraph).

Affidavits or declarations presented to show that the disclosure of an

application is sufficient to one skilled in the art are not acceptable to establish

facts which the specification itself should recite.

In re Buchner,

929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described how he would construct

elements necessary to the claimed invention whose construction was not described in the

application or the prior art; this was not sufficient to demonstrate that such

construction was well-known to those of ordinary skill in the art.);

In re

Smyth,

189 F.2d 982, 90 USPQ 106 (CCPA 1951).

Affidavits or declarations purporting to explain the disclosure or to

interpret the disclosure of a pending application are usually not considered.

In re Oppenauer,

143 F.2d 974, 62 USPQ 297 (CCPA 1944). But see

Glaser v. Strickland,

220 USPQ 446 (Bd. Pat. Int

onstrate that such

construction was well-known to those of ordinary skill in the art.);

In re

Smyth,

189 F.2d 982, 90 USPQ 106 (CCPA 1951).

Affidavits or declarations purporting to explain the disclosure or to

interpret the disclosure of a pending application are usually not considered.

In re Oppenauer,

143 F.2d 974, 62 USPQ 297 (CCPA 1944). But see

Glaser v. Strickland,

220 USPQ 446 (Bd. Pat. Int. 1983) which

reexamines the rationale on which

In re Oppenauer

was based in light

of the Federal Rules of Evidence. The Board stated as a general proposition “Opinion

testimony which merely purports to state that a claim or count, is ‘disclosed’ in an

application involved in an interference . . . should not be given any weight. Opinion

testimony which purports to state that a particular feature or limitation of a claim or

count is disclosed in an application involved in an interference and which explains the

underlying factual basis for the opinion may be helpful and can be admitted. The weight

to which the latter testimony may be entitled must be evaluated strictly on a

case-by-case basis.”