What is the relationship between the breadth of claims and enablement in patent applications?
The breadth of claims in a patent application must be commensurate with the scope of enablement provided in the specification. This relationship is crucial for satisfying the enablement requirement under 35 U.S.C. 112(a). The MPEP Section 2164.06(b) provides several examples illustrating this principle:
In the Enzo Biochem v. Calgene case, the court found that “the amount of direction presented and the number of working examples provided in the specification were very narrow compared to the wide breadth of the claims at issue.” This mismatch led to the invalidation of the patents.
Similarly, in In re Goodman, the court stated that “[n]aturally, the specification must teach those of skill in the art ‘how to make and use the invention as broadly as it is claimed.'” The claims covered protein expression in any plant cell, but the specification only enabled expression in dicotyledonous plant cells, leading to a rejection.
These cases demonstrate that inventors should ensure their specifications provide sufficient guidance and working examples to support the full scope of their claims, or risk rejection or invalidation due to lack of enablement.
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