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Examining for Enablement and Definite Claim Language

Intellectual Property Strategy, Patents Tags: Definite Claim Language, enablement, USPTO

Do Your Homework
This is just a quick reminder: say what you mean and mean what you say when submitting your patent applications.

The USPTO is in place to ensure that the highest quality patents are produced as a means of encouraging innovation in science and the practical arts. This also lends support to fair commerce. In 2017, the USPTO received over 647,000 patent applications [1]. These were reviewed by 8,147 patent examiners [2]. Over eight thousand people, every day, work to uphold the same standards. They interpret and measure your work to determine whether your invention warrants patent protection. Two of those units of measurement are evidence of enablement and definite claim language.

From the applicant’s perspective, enablement and definite claim language help certify that you are not infringing on others’ patents and that others cannot infringe upon yours. Taking shortcuts, including less information than you might be able to, even using ambiguous terms, can result in further time-consuming review, if not outright rejection.

What Examiners are Looking For
Lifted from the USPTO pages, following are the rules that drive the patent examiners to their decisions.

Enablement: 2164 The Enablement Requirement [R-11.2013] “The purpose of the requirement that the specification describe the invention in such terms that one skilled in the art can make and use the claimed invention is to ensure that the invention is communicated to the interested public in a meaningful way. The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art how to both make and use the claimed invention… A patent claim is invalid if it is not supported by an enabling disclosure.” [3]

Definite Claim Language: 2173 Claims Must Particularly Point Out and Distinctly Claim the Invention [R-11.2013] “… a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention. In patent examining parlance, the claim language must be “definite” to comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” [4]

Statements of enablement and definite claim language provide clarity not only for the patent examiner, but also for your competitors who want to avoid infringement.

In addition, thoroughly describing your ideas and invention implementation is important for defensive publication, when you are not seeking a patent. Your invention disclosures serve as prior art and are effective in deterring competitors from operating in your space. This strategy for protecting your intellectual property deserves the same attention to detail as does a patent application when showing enablement.

An Example in Design
When the descriptive language in your patent application is unclear or seemingly absent, the patent examiner can reject it. However, it can then go before the Patent Trial and Review Board (PTAB) for further consideration. Not good enough? The Federal Circuit Court can take a look at it. This was the series of events that followed the application for a design patent for, “Shoe Bottom”, submitted by inventor Ron Maatita on October 24, 2011.

The application comprised one claim and two figures. The figures were two-dimensional, which was the point of contention in determining whether the description used definite language. The examiner asserted that because the true design of the shoe bottom could only be understood if viewed from multiple viewpoints, the drawings did not depict, without “conjecture” the scope of the claims, even for someone skilled in the art. Without a clear scope, the claim was indefinite.

Maatita did not accept this rejection, and the next step was review by the PTAB. The PTAB supported the examiner’s evaluation and maintained the rejection.

Still not ready to succumb, Maatita appealed the PTAB’s decision to the Federal Circuit. The Federal Circuit revealed their interpretation based on the application’s ability to deter infringement. The Federal Circuit concluded that a reviewer skilled in the art could, indeed, understand the detail and application of the design claim by looking at the two-dimensional figures that Maatita provided. This was decided on August 20, 2017.

The precedent set for claims design patent applications is in the Federal Circuit’s statement: “the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration.” [5] If the claim verbiage is not in itself definite, then the figure might serve as proof of the intended subject matter and design scope.

Almost seven years after his original application submission, Maatita’s efforts led to a significant decision by the United States Court of Appeals.

References
[1] https://www.statista.com/statistics/256554/number-of-patent-application-filings-in-the-us/
[2] https://www.uspto.gov/sites/default/files/documents/USPTOFY17PAR.pdf
[3] https://www.uspto.gov/web/offices/pac/mpep/s2164.html
[4] https://www.uspto.gov/web/offices/pac/mpep/s2173.html
[5] https://www.fitcheven.com/?t=40&an=79854&anc=180&format=xml&p=5486