Can a patent application meet the utility requirement but fail the enablement requirement?
Yes, it is possible for a patent application to meet the utility requirement of 35 U.S.C. 101 but still fail the enablement requirement of 35 U.S.C. 112(a). The MPEP provides an example:
“If an applicant has disclosed a specific and substantial utility for an invention and provided a credible basis supporting that utility, that fact alone does not provide a basis for concluding that the claims comply with all the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. For example, if an applicant has claimed a process of treating a certain disease condition with a certain compound and provided a credible basis for asserting that the compound is useful in that regard, but to actually practice the invention as claimed a person skilled in the relevant art would have to engage in an undue amount of experimentation, the claim may be defective under 35 U.S.C. 112, but not 35 U.S.C. 101.”
This means that even if an invention has a clear and credible use, the application may still be rejected if it doesn’t provide sufficient information for a skilled person to use the invention without undue experimentation.
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