Enablement: A patent application must describe how to make and use the invention with sufficient clarity, precision and detail to enable skilled person to make and use it w/o undue experimentation. Must be established only as of the date the invention was filed. (C4P40).
1.    General
a.    Enablement would be easy if all we were trying to do is give you literally the invention you accomplished. You would turn in the model or sample cells, etc and that’s it. Too easy to invent around this so we give inventor more than she invented.
b.    The closer you are to claiming what you did, the easier to patent. If you build something, claim what you did, you get it even if you don’t understand animating principle. Just have to explain how the pieces fit together.
c.    Becomes an issue for broad, unpredictable claims.
(A)    For a predictable field, broad claims become easier. If you invent machine, easy to see how you can swap a bolt for a nail, etc. Teaching the one allows us to see alternative embodiments.
- ex. Mousetrap w/plastic springs and you want to claim it w/all springs.
(B)    Harder in unpredictable areas like chem & biotech. May be difficult to abstract out to other equiv reactions. Enablement more of an issue here.
(C)    People first give their detailed description of what they did, but also give a more general discussion of animating principle from behind what they did.
2.    In re Wands: (C4P21) Court upholds patent.
a.    Claim: Not process of creating antibodies p23 Rather, method for using antibody to test for antigen of Hep B. A few types of antibodies, their contribution is using IgM., has good binding affinity.
b.    If you are claiming a process to have enabled process must be able to enable all the ingredients. If you have tough ingredients rule kicks in, if there is method for making ingredients needed for method, must give us that too.
(A)    Cell deposit: One way to satisfy this rule. Satisfies showing us how to make it.
(B)    Why does W concede deposit does not enable the generic claims that are on appeal?
(1)    Wand’s claim is really broad: Wants antibody claim across broad range of affinity, but deposit only enables 5 or 6 different antibodies.
(2)    Claim covers more than this, so that’s why he didn’t argue cells enable, he wanted all the high affinities, broad claim, yet his deposit could only enable the antibodies he deposited. So that’s why he didn’t lean on the deposits.
(3)    Alternatively, may have not wanted to deposit for future inventions.
(4)    Wand thus argues starting materials are readily available (antibodies)
c.    Two Levels of Confusion. Court isn’t clear which of the 2 bothers them.
(A)    Did Wands know how reliable this thing is?
(B)    How reliable is it? If we’re worried that it’s not reliable enough why not make them go back and try harder but give them the patent.
(1)    Did process several times, archive of cells but tested only some of them. Told patent office that they did this, we went through it 4 times and stopped short of fusing to cancer cell several times.
(2)    Don’t know what happens for remaining 196 cases. There is no requirement to test that many times but concern that maybe they chose ones that were easy, skewing rate?
- No obligation to do 200 tests, might say if they do little its unreasonable but holding them
accountable for # they didn’t complete seems unreasonable.
(C)    Court: Looks pretty reliable, their process yields what they say. Bundled the 2 issues together so we don’t know which court was worried about. We all know this is reliable. Don’t know what would have happened had it only worked 1% of time.
(D)    Key: Requires that artisan skilled in art believes that it works. They’ve shown is they have something that at least sometimes works. What seems special is inventors don’t know whether it always works. But holding holds on other ground, it works and doesn’t say whether they need to know it works or not.
d.    Problem with allowing patent when ingredients aren’t really available: Essentially double-patenting, first patent process, then later the ingredient?
3.    Undue Experimentation: One way we determine enablement is if someone skilled in art could do it w/o undue experimentation
a.    Factors to be considered in determining whether disclosure requires undue experimentation [In re Foreman]
(A)    Quantity of experimentation necessary
(B)    Amount of direction or guidance presented
(C)    Presence or absence of working examples
(D)    Nature of the invention
(E)    State of the prior art
(F)    Relative skill of those in the art
(G)    Predictability or unpredictability of the art
(H)    Breadth of the claims.
b.    What is undue?
(A)    Atlas Powder: (C4P29) Explosive that could be made out of one of 3 categories of invention. Categories are outlined in patent, gives many examples of each. Says take one from each category and you get explosive. Someone tried it and many combinations didn’t work, couldn’t just randomly grab 3. Court said no, if you are skilled in art you’ll be able to narrow list quickly. If you make bad combo you can figure out how to tweak it to work.
(B)    Key: Don’t write us a textbook every time you file patent application, assume skilled in the art person is looking at this. Hurts us a bit since sometimes technology is hard to grasp. Not designing their manufacturing facility for them, they have to do work on their own.
(C)    Upside: Keeps people from drowning you in details with a bad motive – hide the ball.
c.    Incandescent Lamp Patent (C4P5)
(A)    Sawyer and Man (S&M) get patent for incandescent conductor made of carbonized fibrous or textile material. Edison then comes along, finds out particular form of bamboo works the best, buys it up. Issue: Does S&M’s successes with carbonized paper and wood carbon allow them to claim all fibrous or textile material?
(B)    Court here thought a major defect for their patent was not doing the work to say what property of fiber works best. Lot of experimentation left otherwise. Edison brought something to the table.
(1)    S&M didn’t give us the lamp, someone else solved vacuum issue. All they brought was a substance that worked as a filament.
(2)    Different then pencil claim where inventor is giving us the pencil.
(C)    W/o Edison this isn’t an easy case of whether to reject on lack of enablement. It feels broad – every possible fibrous/textile material, but not as slam dunk as with Edison.
4.    Invention must be technologically feasible to enable.
Gould v Helworth: (C5P133) Worked with lasers. Trying to get improvement patent, wrote patent about thing you add to laser to get better control of beam. Infringer said my enablement challenge is at the time he filed patent nobody could build a laser, Gould guessed it would be invented and it would work, he solved a problem ahead of time. Can’t be enabled, nobody could build it bc laser hadn’t been invented. Is that a good outcome, if it was enabling once underlying technology was developed?
5.    Temporal Paradox: (C4P40) Suppose A patents X and some time later B patents an improvement on X called Y that is nonobvious under § 103 at the time of B’s invention. B would still be infringing X to make Y if B’s improvement fits A’s claim as it was understood when A patented. Thus, A enabled Y.