What role does the specification play in supporting an enabling disclosure?
The specification plays a crucial role in supporting an enabling disclosure in a patent application. According to MPEP 2164.01:
“Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein.”
This principle was established in Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005), which clarified that even a discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature.
The specification should provide sufficient information to enable a person skilled in the art to make and use the claimed invention without undue experimentation. This can include:
- Detailed descriptions of the invention
- Working examples
- Guidance on how to practice the invention
- Information on the state of the art
It’s important to note that the specification need not teach what is well known in the art, as stated in the MPEP:
“A patent need not teach, and preferably omits, what is well known in the art.”
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