How does the identification of a single inoperative embodiment affect claim enablement?
The identification of a single inoperative embodiment among many operable embodiments does not necessarily render a claim broader than the enabled scope. The MPEP 2164.08(b) references the In re Angstadt case:
“A disclosure of a large number of operable embodiments and the identification of a single inoperative embodiment did not render a claim broader than the enabled scope because undue experimentation was not involved in determining those embodiments that were operable. In re Angstadt, 537 F.2d 498, 502-503, 190 USPQ 214, 218 (CCPA 1976).”
This means that if a patent disclosure includes many operable embodiments and only one inoperative embodiment, the claims may still be considered enabled if identifying the operable embodiments does not require undue experimentation.
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