Fletcher YoderEnablement and written description requirements with respect to claims are judged as of the priority date of a patent. A later existing state of art is not considered in the enablement analysis of a claim. Similarly, the written description requirement is in view of what is claimed and whether the specification reasonably conveys possession of the claimed subject matter as of the filing date of the patent.
The limiting preamble of a Jepson claim must be supported with sufficient written description, and what constitutes sufficiency varies depending on the knowledge of the pertinent person of ordinary skill in the art.
A disclosure of discrete values does not provide written description support for claimed ranges, a skilled artisan must be able to reasonably discern a disclosure of that range.
Preambles can be limiting when they state an intended purpose for methods of using a compound.
Claims that lack support from the written description are invalid under 35 U.S.C. § 112.
Describing elements in the specification as essential rises to the level of disavowal of claim scope
A specification can communicate to a person of ordinary skill in the art that a patentee invented not just the combination of all identified features but also sub-combinations of the features – which may achieve the purposes of an invention even without the omitted features.
35 U.S.C. § 112, ¶6 is not invoked, in the absence of reciting the term “means”, if those skilled in the art understand the structural significance of the claim language. Also, in means-plus-function claims, even if a disputed term is not limited to a single structure, the disputed term is not disqualified as a corresponding structure as long as a class of structures is identifiable by a skilled artisan.
There must be adequate support within the description of a patent to claim a genus when a species is described.
There must be adequate support within the description of a patent to claim a genus when a species is described.