What happens if a specification is not enabling for the full scope of the claimed invention?
If a specification is not enabling for the full scope of the claimed invention, it may be considered insufficient and could lead to rejection of the patent application or invalidation of an issued patent.
The MPEP 2164.05(b) cites a recent case that illustrates this point: “The court found that undue experimentation was required to enable the full scope of the claims where there was ample evidence that relevant artisans would not know how to perform the claimed invention for more than a narrow range of the claimed scope of invention.” (Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 1352, 2021 USPQ2d 519 (Fed. Cir. 2021)). This underscores the importance of ensuring that the specification enables the full scope of the claimed invention.
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