How do working examples in a patent specification affect enablement?
Working examples in a patent specification play a crucial role in demonstrating enablement, especially in unpredictable fields like biotechnology and chemistry. The MPEP Section 2164.06(b) provides insights on how courts evaluate working examples:
In the In re Wands case, the court found that “the applicant carried out the entire procedure for making a monoclonal antibody against HBsAg three times and each time was successful in producing at least one antibody which fell within the scope of the claims.” This contributed to the court’s conclusion that the invention was enabled.
Conversely, in Enzo Biochem v. Calgene, the limited working examples compared to the broad claims contributed to the finding of lack of enablement.
Working examples serve to:
- Demonstrate the invention’s operability
- Provide guidance on how to practice the invention
- Support the breadth of the claims
- Reduce the amount of experimentation needed
Inventors should include sufficient and relevant working examples in their specifications, particularly for complex or unpredictable technologies, to strengthen their enablement support.
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