How does the USPTO determine if a claim is broader than the enabling disclosure?
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.
The USPTO determines if a claim is broader than the enabling disclosure by considering two main factors:
- How broad the claim is with respect to the disclosure
- Whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation
According to the MPEP, The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation.
(MPEP 2164.08)
Examiners must carefully analyze the claim language and compare it to the specification to ensure that the full scope of the claim is supported by the disclosure. If a reasonable interpretation of the claim is broader than the description in the specification, the examiner must ensure that the full scope of the claim is enabled.