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Home > Nanotechnology Columns > Magda Carvalho PhD, JD > Excitation energy: Is the written description enabling?

Magda Carvalho
Patent Attorney
Patent Law at M. Carvalho

Abstract:
The patent application covers technology relating to the propagation or distribution of excitation energy (arrangement of self resonant bodies). On appeal to the BPAI the Applicants lost the case due to their failure to show a connection between the discussed theory set in the written description and the structure recited in the pending claims that would enable a skilled artisan to practice the invention without undue experimentation.

October 12th, 2010

Excitation energy: Is the written description enabling?

One requirement for the grant of a patent is the enablement requirement. The first paragraph of 35 U.S.C. 112 states that "the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention." Examiners weight several factual considerations in determining undue experimentation: (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.

When an Examiner is reading an application for enablement, he or she looks for the relationship between the specification, the claims, and the knowledge of one of ordinary skill in the art. Since the invention is what is articulated in the claims, the Examiner analyzes whether a particular claim is supported by the written description and considers all the evidence related to each of the factors listed above before reaching a conclusion of non enablement.

Ex parte Hillis et. al. Appeal No. 2010-000974 (BPAI 09/28/2010).

This case indicates that the requirements of enablement are scrutinized by the Examiner. If by following the steps set forth in the written description, a skilled artisan is not able to make and use the claimed invention without undue experimentation, then the claim has not been enabled. The burden is then on the applicant to convince the Examiner that the enablement is present.

The patent application relates to the propagation or distribution of excitation energy. Specifically, the invention concerns an electromagnetically responsive element composed of an arrangement of self resonant bodies, such as atoms or quantum dots that form an effective dielectric constant, typically at or near a resonance.

Claims 1 is illustrative: An optical component having a selected optical response to excitation energy at a selected frequency, comprising: an array of self resonant bodies, each of the self resonant bodies having a frequency line center substantially at the selected frequency, the self resonant bodies being arranged in a pattern corresponding to the selected optical response.

The Examiner found that the Specification did not satisfy the enablement requirement. The Specification failed to show a connection between the discussed theory and the structure recited in the pending claims that would enable an skilled in the art to practice the invention without undue experimentation. The Examiner determined that the appellants' approach to controlling the optical response of the array was a theory "of college level optical physics courses" including "basic equations and physical parameters taught in any electrical or optical engineering curriculum."

The Board of Patent Appeals and Interferences (BPAI) sided with the Examiner. The BPAI pointed that to "establish a lack of enablement, the Examiner must present a reasonable explanation why "the scope of protection provided by [the] claim is not adequately enabled by the description of the invention provided in the specification." The BPAI agreed with the Examiner that appellants' written description was a "well-written summary of college level." The written description was a case of what applicants hope to invent since it contained a "broad reference to possible intended uses of the invention" (such as, optical elements that can be applied to optical trains in cameras, displays, machine vision systems, printers, or other systems). Besides, appellants' effort to "map" the claims to the written description in their "Summary of Claimed Subject Matter," pointed to an absence of connection. This is specifically observed when the appellants state that "[a]n optical component having a selected optical response to excitation energy at a selected frequency" is supported by drawing element numbers 100, 500, 610, and 700 in Figs. 3, 5, 6, and 7", while the Specification showed that drawing elements 100 and 610 were disclosed as being an "array . . . of oscillators."; that drawing element 500 is disclosed as being an "optical element 500 includ[ing] an array 502 of oscillators 504" (Spec. 22); and that drawing element 700 is disclosed as being an "optical device 700 [of] . . . self resonant bodies 702." Besides, the BPAI pointed to the fact that the Figures and drawing elements were a "generically representation of arrays of oscillators or self-resonant bodies" without "information as to selected optical response, and with their generic patterns of spots provide no support for producing an optical element that has a selected optical response to excitation energy at a selected frequency."

Conclusion

Applicants have lost patent protection over enablement issues. The time of teaching how the invention works is when drafting the detailed description by teaching all of the steps of the independent claims. Take in consideration that in well known fields where the results are predictable there is less teaching, while in emergent fields the teaching should be in more detail.

Please send your comments to Magda Carvalho at

http://www.linkedin.com/in/magdacarvalhopatent

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