We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.
In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient “evidence” that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here .
The Appellant, a chemical company, was
appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the
Examiner concluded that one of ordinary skill in the art would not have been
able to construct the claimed invention, a fullerene molecule, based on the
specification. The Appellant responded by submitting a Declaration, or
Affidavit, from one of ordinary skill in the art stating that, in fact, one of
ordinary skill in the art WOULD HAVE BEEN ABLE to construct the fullerene
molecule based on the specification.
The
BPAI decided: “We will not sustain this rejection because in our view, the
Appellants have submitted evidence sufficient to establish that a person of
ordinary skill in the art would have been able to make and use the claimed
invention. The Second Declaration of Joseph Talnagi is evidence that a person
of ordinary skill in the art would know how to … Mr. Talnagi lastly states that
a person of ordinary skill in the art would conclude that … We conclude
that the second declaration of Mr. Talnagi is sufficient to rebut the Examiner’s
case of lack of enablement.”
The
important lesson here is that a Patent Examiner’s 35 U.S.C. § 112, first
paragraph, enablement rejection can be successfully rebutted using a § 1.132
Affidavit. If you can provide an Affidavit from one of ordinary skill in the
art stating that he/she WOULD HAVE BEEN ABLE to construct the claimed invention
based on the specification, you’ve got a potential premise for reversal on
Appeal.
Affidavits
should be a part of every Patent Attorney’s toolbox and can be used to fight
other types of rejections, such as 35 U.S.C. § 103 obviousness rejections, as
discussed in my previous blog post.
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.