Can an invention have utility but still fail the enablement requirement?
Yes, an invention can have utility but still fail the enablement requirement. The MPEP provides an interesting insight into this situation:
“In some instances, the utility of the claimed invention will be provided, but the skilled artisan will not know how to effect that use. In such a case, no rejection will be made under 35 U.S.C. 101, but a rejection will be made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
The MPEP cites a historical case to illustrate this point:
“As pointed out in Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1871), an invention may in fact have great utility, i.e., may be ‘a highly useful invention,’ but the specification may still fail to ‘enable any person skilled in the art or science’ to use the invention.”
This means that even if an invention is clearly useful, the patent application may be rejected if it doesn’t provide sufficient information for a person skilled in the art to make and use the invention without undue experimentation. The enablement requirement ensures that the public receives a meaningful disclosure in exchange for the patent grant.
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