Can a new limitation in a patent claim create an enablement problem?
Adding a new limitation to a patent claim does not necessarily create an enablement problem. The MPEP provides guidance on this issue:
“Even if a new limitation is not described in the original disclosure, the addition of a new limitation in and of itself may not create an enablement problem provided that one skilled in the art could make and use the claimed invention with the new limitation.“
This means that even if a limitation is not explicitly described in the original specification, it may still be enabled if a person skilled in the art could understand how to make and use the invention with that limitation. However, it’s important to note that such limitations must be analyzed for both enablement and description using their separate criteria.
If the new limitation is only present in the claims and not in the specification, the examiner should object to the specification for lacking support using form paragraph 7.44, as outlined in MPEP § 2163.06.
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