Introduction
A patent application must describe the invention clearly enough for a person skilled in the relevant technology to understand and practice it. The United States Patent and Trademark Office (USPTO) may issue a rejection under 35 U.S.C. § 112 when the application does not satisfy one or more statutory requirements concerning the specification or claims.
Section 112 contains several important requirements. The most common § 112 rejections involve written description, enablement, and indefiniteness.
Written Description Rejection — 35 U.S.C. § 112(a)
A written description rejection arises when the specification does not adequately demonstrate that the inventor possessed the claimed invention as of the filing date.
For example, suppose an application originally describes a device using components A and B, but later adds a claim requiring components A, B, and C. If the original specification does not provide sufficient support for component C or the claimed combination, the examiner may issue a written description rejection.
The examiner issues a rejection based on a written description under 35 U.S.C. § 112(a), which uses Form Paragraph 7.31.01:
The claim(s) is/are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
How can an applicant respond?
The applicant may:
- Identify portions of the original specification that support the claim;
- Amend the claim to conform to the original disclosure; or
- Provide an appropriate explanation showing that the inventor possessed the claimed subject matter.
New matter generally cannot be added to the application to cure a written description problem.
If an applicant adds new matter to a patent application by amendment, the examiner issues a rejection under 35 U.S.C. § 112(a) for lack of written description support if the new matter is relied upon to support the claimed invention.
Question: What is an examiner’s action if a new matter is added to a specification or a claim?
Answer: Objection under § 132(a) is issued when the new matter is added to the specification and rejection under § 112(a) is issued when the claim relied on subject matter not supported by original disclosure.
Enablement Rejection — 35 U.S.C. § 112(a)
The enablement requirement asks whether the specification enables a person skilled in the art to make and use the claimed invention without undue experimentation.
For example, if an application claims a broad class of chemical compounds but provides insufficient information for a skilled person to make and use substantially the full scope of the claimed invention, the examiner may raise an enablement rejection.
The examiner issues a rejection based on lack of enablement under 35 U.S.C. § 112(a), which uses Form Paragraph 7.31.02 including undue experimentation analysis:
The claim(s) is/are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The examiner might consider the 8 Wands factors when the rejection is applied:
- Breadth of the claims;
How broad is the claim? A very broad claim is more difficult to enable. - Nature of the invention;
Is the technology simple or technically complex? - State of the prior art;
What was already known when the application was filed? - Level of ordinary skill in the art;
How knowledgeable would a typical skilled person have been? - Level of predictability in the art;
Is the technology predictable or unpredictable?
For example, mechanical inventions are often more predictable than biotechnology. - Amount of direction or guidance provided by the inventor;
Does the specification give sufficient instructions for practicing the invention? - Existence of working examples; and
Does the specification provide actual examples showing that the invention works? - Quantity of experimentation needed.
How much experimentation would a skilled person have to perform to practice the claimed invention?
How can an applicant respond?
The applicant may explain why the disclosure is sufficient for a person skilled in the art to practice the invention. The applicant may also amend the claims to a scope that is adequately enabled by the specification.
There are guidelines for satisfying the enablement requirement:
- The enablement requirement applies only to claimed subject matter;
- The specification need be enabling only to someone skilled in the relevant art;
- The “skill of the art” is determined as of the date of filing;
- The specification need not explain how or why the invention works;
- Undue experimentation must not be required to reproduce the invention;
- The claimed matter must not be unduly broad in relation to the disclosure;
- The specification must teach how to make and use each member of a Markush group;
- Working and prophetic examples can be used to satisfy the enablement requirement; and
- The enablement requirement does not extend to technology that arises after the time of filing.
Question: What is an examiner’s concern, based on Wands factor for one particular sensor that detects chemical X only disclosed by the specification, for the following claim: A device configured to detect any type of chemical substance?
Answer: The claim is very broad, i.e., any chemical.
Indefiniteness Rejection — 35 U.S.C. § 112(b)
Under § 112(b), the claims must particularly point out and distinctly claim the subject matter which the applicant regards as his invention.
An indefiniteness rejection may arise when claim language is unclear or when a person skilled in the art cannot reasonably determine the scope of the claim.
For example, a claim reciting:
“A fast processor configured to process data efficiently”
could raise an indefiniteness issue if terms such as “fast” or “efficiently” do not provide a reasonably clear boundary for the claim.
The examiner issues a rejection under 35 U.S.C. § 112(b), which uses Form Paragraph 7.34.01:
The claim(s) is/are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
How can an applicant respond?
The applicant may:
- Explain the meaning of the disputed claim term;
- Point to the specification or technical understanding of the term; or
- Amend the claim to provide greater clarity.
The objective is to make the scope of the claim reasonably clear.
Question: What are examples for applying 35 U.S.C. § 112(b) rejection?
Answer: The examples are as follows:
- Terminology used inconsistent with accepted meaning;
- Relative term – term of degree rendering claim indefinite;
- Broader range/limitation and narrow range/limitation in same claim;
- Lack of antecedent basis in the claim;
- Indefinite claim language such as “for example,” “or the like,” or “such as”; and
- Essential steps/elements/cooperative relationships omitted.
Lack of Proper Antecedent Basis
An examiner may also raise an indefiniteness issue when a claim refers to an element without providing a proper antecedent basis.
For example:
“A system comprising a processor and the memory…”
If the claim has not previously introduced “a memory,” the phrase “the memory” may lack antecedent basis.
This problem can often be corrected by changing the language to:
“A system comprising a processor and a memory…”
However, lack of antecedent basis does not necessarily make a claim indefinite if the meaning of the claim is otherwise reasonably clear.
The examiner issues a rejection under 35 U.S.C. § 112(b), which uses Form Paragraph 7.34.05:
The claim(s) recites the limitation, e.g., the memory. There is insufficient antecedent basis for this limitation in the claim.
Question: Why does an examiner issue a §112(b) rejection for lack of antecedent basis for the following claim?
A system comprising:
a memory configured to store data; and
the processor configured to process the data.
Answer: Since there is no previous introduction of “a processor.”
Means-Plus-Function and § 112(f)
Another issue can arise when a claim uses functional language such as:
“means for processing the data.”
Under 35 U.S.C. § 112(f), certain “means-plus-function” limitations are interpreted in relation to the corresponding structure disclosed in the specification and equivalents thereof.
If the specification fails to disclose adequate corresponding structure, the claim may encounter a § 112 problem.
The examiner issues a rejection under 35 U.S.C. § 112(b) for a claim limitation invoking 35 U.S.C. § 112(f), which uses Form Paragraph 7.34.18:
Claim element, e.g., means for processing the data, is a limitation that invokes 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function.
Question: What is a generic placeholder which is the limitation to use a word that is a substitute for “means”?
Answer: The generic placeholder is as follows:
- module;
- unit;
- device;
- mechanism;
- element;
- member;
- apparatus;
- machine;
- system; or
- component.
Conclusion
A rejection under 35 U.S.C. § 112 does not necessarily mean that the invention itself is unpatentable. The rejection generally identifies a problem with the application’s disclosure or claim language.
The applicant should carefully determine whether the rejection concerns:
- Written description under § 112(a);
- Enablement under § 112(a);
- Best Mode under § 112(a);
- Indefiniteness under § 112(b);
- Dependent Claims under § 112(d); or
- Functional Claiming under § 112(f).
A proper response should address the specific reasoning of the examiner and, when appropriate, amend the claims or explain why the original disclosure satisfies the statutory requirement.
References
- 35 U.S.C. § 112 — Specification U.S. Code
- MPEP § 2103 — Patent Examination Process USPTO
- MPEP § 2163 — Written Description Requirement USPTO
- MPEP § 2164 — Enablement Requirement USPTO
- MPEP § 2171 — Requirements Under 35 U.S.C. § 112(b) USPTO
- USPTO MPEP — Chapter 2100, Patentability USPTO
Educational disclaimer: This article provides general educational information about U.S. patent prosecution. It is not legal advice and does not create an attorney-client relationship.