What is the relationship between claim construction and enablement analysis?

Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:

“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“

For terms that are not well-known in the art or could have multiple meanings, the examiner must:

• Select the definition they intend to use when examining the application
• Base this definition on their understanding of what the applicant intends it to mean
• Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action

This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.

To learn more:

• Claim Construction
• Enablement Analysis
• Patent Examination
• Claim Interpretation