How is enablement evaluated for compound or composition claims limited by a particular use?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
For compound or composition claims limited by a particular use, enablement should be evaluated based on that specific limitation. The MPEP provides guidance on this:
When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation.
(MPEP 2164.01(c))
This approach ensures that the enablement requirement is tailored to the specific use claimed in the patent application. For example, if a claim is for a chimeric gene capable of being expressed in cyanobacteria, the enablement evaluation would focus on that particular use.