Board Reverses Examiner for Failing to Meet the Burden Required to Challenge Enablement

February 10, 2012 – Blog Post

In Ex parte Stux et al. (Appeal 2010-003936; Application serial no. 11/307,367), at issue was whether the Examiner erred in determining that the Specification does not enable one of ordinary skill in the art to make and use the composite material.

The claim at issue recited a composite material comprising particles of LiCoO2, particles of Li2RuO3, a conductive matrix and a polymeric binder wherein the particles of LiCoO2 are free of Li2RuO3 and the particles of Li2RuO3 are free of LiCoO2 and the weight ratio of LiCoO2 to Li2RuO3 is from about 90:10 to about 55:45.  The Examiner rejected the claim as failing to comply with the enablement requirement for containing subject matter which was not described in the specification in such a way as to enable one skilled in the art to make and/or use the invention. As support for this assertion the Examiner stated merely “[w]hile the specification [19] does appear to have support for a mixed compound weight of 10:90 to about 90:10, there does not appear to be support for a weight ratio range of LiCoO2 to Li2RuO3 from about 90:10 to about 55:45.  There is no support for an end point of about 55:45.  Applicant does not show where support for the amendment is disclosed.” However, the enablement requirement found in the first paragraph of 35 U.S.C. § 112 is separate and distinct from the written description requirement of that provision.  See, e.g., Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“Since its inception, this court has consistently held that § 112, first paragraph, contains a written description requirement separate from enablement”). While this statement may have satisfied his burden for a new matter rejection it was clearly not sufficient to support an enablement rejection. 

The Board reversed the Examiner, iterating the requirement for challenges to enablement:

“It is well established that the Examiner has the “burden of giving reasons, supported by the record as a whole, why the [S]pecification is not enabling . . . Showing that the disclosure entails undue experimentation is part of the PTO’s initial burden.”  In re Angstadt, 537 F.2d 498, 504 (CCPA 1976).  In determining whether any given disclosure would require undue experimentation to practice the claimed subject matter, the Examiner must consider not only the breadth of the claims, the amount of direction or guidance presented and the presence or absence of working examples, but also the nature of the invention, the state of the prior art, the relative skill of those in the art and the predictability or unpredictability of the art.  In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991)….Here, the Examiner has not provided any adequate reason why the Specification does not enable one of ordinary skill in the art to make and use the claimed composite material having LiCoO2 and Li2RuO3 in the weight ratio from about 90:10 to about 55:45, without any undue experimentation.  Nowhere has the Examiner explained why the factors enumerated in Vaeck, as applied to the present circumstance, support the Examiner’s determination that that the Specification does not enable one of ordinary skill in the art to make and use the composite material recited in claim 18.   Accordingly, we find no basis for the Examiner to conclude that claim 18 is not in compliance with the enablement requirement of the first paragraph of 35 U.S.C. § 112.