How is enablement evaluated for compound or composition claims with multiple uses?

When evaluating enablement for compound or composition claims with multiple uses, the approach differs depending on whether the claim is limited by a particular use or not. According to MPEP 2164.01(c):

  1. For claims limited by a particular use:

    “When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation.”

  2. For claims not limited by a recited use:

    “When a compound or composition claim is not limited by a recited use, any enabled use that would reasonably correlate with the entire scope of that claim is sufficient to preclude a rejection for nonenablement based on how to use.”

Furthermore, for applications disclosing multiple uses:

“If multiple uses for claimed compounds or compositions are disclosed in the application, then an enablement rejection must include an explanation, sufficiently supported by the evidence, why the specification fails to enable each disclosed use. In other words, if any use is enabled when multiple uses are disclosed, the application is enabling for the claimed invention.”

This means that if the specification enables at least one of the disclosed uses, the claim is considered enabled, even if other disclosed uses may not be enabled.

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Topics: MPEP 2100 - Patentability, MPEP 2164.01 - Test Of Enablement, Patent Law, Patent Procedure
Tags: Composition Claims, Compound Claims, Enablement Evaluation, Multiple Uses