What is the relationship between inherency and the enablement requirement?

What is the relationship between inherency and the enablement requirement?

While MPEP 2163.07(a) primarily discusses inherency in relation to the written description requirement, it’s important to understand its relationship with the enablement requirement under 35 U.S.C. 112(a):

• Inherency can support both written description and enablement requirements.
• If a property is inherent to the disclosed invention, it may be considered enabled without explicit disclosure of how to achieve that property.
• However, the enablement requirement is distinct and may require more than just inherent disclosure.

The MPEP 2164 states: “The enablement requirement refers to the requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention.” While inherency can support enablement, it’s crucial to ensure that the specification provides sufficient guidance for one skilled in the art to make and use the invention without undue experimentation.

To learn more:

• inherency
• enablement
• 35 U.S.C. 112(a)
• written description
• patent specification