How is enablement evaluated for compound or composition claims limited by a particular use?
For compound or composition claims limited by a particular use, enablement should be evaluated based on that specific limitation. The MPEP provides guidance on this:
When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation.
(MPEP 2164.01(c))
This approach ensures that the enablement requirement is tailored to the specific use claimed in the patent application. For example, if a claim is for a chimeric gene capable of being expressed in cyanobacteria, the enablement evaluation would focus on that particular use.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2164.01(C) - How To Use The Claimed Invention,
Patent Law,
Patent Procedure