The CCPA's Lasting Impact On U.S. Patent Law ' An Examination Of CCPA Enablement Decisions

• Published date: 08 November 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Shannon Patrick and Stacy Lewis

Introduction

The enablement requirement is a bedrock principle of the U.S. patent system. In exchange for a 20-year monopoly on a claimed invention, the public gets a description of the invention. Specifically, the enablement requirement codified in 35 U.S.C. ' 112, ' 1 requires that a disclosure enable a person of ordinary skill in the art ("POSA") to make and use the claimed invention. It is generally accepted that this description must teach a POSA to make and use a claimed invention without "undue experimentation." Should a disclosure be insufficient so as to require "undue experimentation," the claimed invention is not properly enabled.

While modern case law continues to define the more nuanced questions regarding enablement, much of our core understanding of the requirement comes from cases decided by the United States Court of Customs and Patent Appeals ("CCPA"). The cases discussed below remain good law today and should be considered when making patent prosecution and litigation decisions that rest on the enablement requirement.¹

Case Summaries

In re Robins, 429 F.2d 452 (CCPA 1970)

In In re Robins, the patent applicant filed an appeal from a decision by the Patent Office Board of Appeals ("the Board") affirming a rejection of claims 19-28 directed to "a process for producing solid, non-cellular urethane polymers and to the resulting product." Id. at 453-54. The examiner originally rejected the claims as unduly broad and not supported by the disclosure. Id. The examiner explained this position by stating that the applicant had not disclosed a sufficient number of compounds falling within the scope of the claims. Id. The specification stated that:

"[T]wo compounds which are readable on the claims (i.e., on which the claims read): phenyl mercury acetate and phenyl mercury hydroxide. On page 5 of the specification, appellant discusses in broad terms the catalyst contemplated. Note that appellant states that the 'mono-organo' portion of the catalyst may be 'alkyl' or 'aryl.' The only example of 'aryl' is phenyl. There are no examples of 'alkyl.' Note that no particular meaning for 'aryl' has been ascribed to in the specification . . . The instant specification contains no examples of alkyl. The mono-organo portion of the catalysts is not limited to 'aryl' and 'alkyl.' Thus an (any?) organic radical is included within appellant's recitations."

Id. at 455.

The board affirmed the examiner's rejection. It stated found the term 'organo' "to be far broader...