Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
First Paragraph (1)
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
MPEP 2100 – Patentability (3)
The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
To learn more:
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
MPEP 2164 – The Enablement Requirement (1)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
MPEP 2165.02 – Best Mode Requirement Compared To Enablement Requirement (1)
The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
To learn more:
MPEP 2166 – Rejections Under 35 U.S.C. 112(A) Or Pre – Aia 35 U.S.C. 112 (1)
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
Patent Law (3)
The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
To learn more:
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
Patent Procedure (3)
The best mode requirement and the enablement requirement are distinct obligations under 35 U.S.C. 112(a). As stated in MPEP 2165.02:
“The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.”
The enablement requirement ensures that the invention is described in a way that allows the public to make and use it. In contrast, the best mode requirement obligates inventors to disclose the best way they know of carrying out the invention at the time of filing.
To learn more:
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more: