How can an applicant overcome a rejection for lack of enablement?
To overcome a rejection for lack of enablement, an applicant must provide evidence that demonstrates the sufficiency of the disclosure. According to MPEP 716.09:
Evidence to supplement a specification which on its face appears deficient under 35 U.S.C. 112 must establish that the information which must be read into the specification to make it complete would have been known to those of ordinary skill in the art.
This means that applicants should provide evidence showing that a person skilled in the art could make and use the invention based on the disclosure and their general knowledge. However, it’s important to note that affidavits or declarations alone may not be sufficient, as the MPEP states:
Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite.
Therefore, the best approach is to amend the specification to include all necessary information for enablement, rather than relying solely on external evidence.
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