Enablement Rejection Traversal
When rejecting claims under 35 U.S.C. § 112, first paragraph, for an alleged lack of enablement, Examiners often do not realize that proper
enablement rejections can only be made by meeting a fairly rigorous standard. First, the Examiner must allege that a person of ordinary skill in the art could not
practice the invention without undue or unreasonable experimentation. Second, the Examiner must show on the record that a number of enumerated
factors (the Wands factors) have been considered. In the case of inventions dealing with method claims or computer program/computer-readable medium claims,
these rejections often appear as conclusory assertions that explicit definitions for a program and/or computer-readable medium are not
disclosed in the specification. An example of a traversal of such a rejection is provided below.
The Office Action rejected claim X under the first paragraph of 35 U.S.C. § 112 as allegedly failing to meet the enablement requirement. Specifically, the Office Action
alleged, in part, that "[t]he disclosure of a computer program critical or essential to the practice of the invention, but not included in the claim(s) is not enabled by
the disclosure. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976)". The Office Action then alleged, in part, that "[t]he Examiner finds no
evidence/support in the specification (or figures) that a computer program was contemplated." Applicant respectfully traverses the rejection and respectfully submits that
this statement is contrary to, and inconsistent with, both Mayhew and the MPEP.
MPEP § 2164.08(c) states that "[a] feature which is taught as critical in a specification and is not recited in the claims should result in a rejection of such claim
under the enablement provision section of 35 U.S.C. 112. See In re Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356, 358 (CCPA 1976)" (emphasis added). However, the Office
Action asserted that there is no evidence or support in the specification for a computer program. Applicant respectfully submits that the position that a computer program
is taught as critical by the specification, yet is not disclosed therein, is contradictory and cannot be maintained.
Further, Applicant respectfully submits that use of a computer program is indeed supported by the present specification. Applicant respectfully notes that the standard
for enablement is not whether a feature has explicit antecedent support in the specification. Rather, MPEP § 2164.01 states, in part, that "[a]ny analysis of whether
a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding
the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention" (emphasis added). In other words, the Examiner
should ask "is the experimentation needed to practice the invention undue or unreasonable" by such a person (see Id.). The factors for making a determination of
undue experimentation are rigorous and include, but are not limited to:
- (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.
(See MPEP § 2164.01(a)). Applicant respectfully notes that these factors have not been considered on the record.
In the instant case, the devices discussed in the specification, such as a [APPLICABLE HARDWARE DEVICE HERE], are commonly known to implement software. Software may
offer certain benefits over hardwired solutions, such as updatability and reconfigurability. While it is possible to implement the logic of some embodiments of the present invention
in hardware alone, Applicant respectfully submits that a person of ordinary skill in the art would readily appreciate that software can also be used. In fact, the Office
Action appears to implicitly take note of the fact that some embodiments of the present invention may be implemented via software as the Office Action stated on page
[PAGE NUMBER] that "Claims X, Y, and Z recite method steps that are not limited from only occurring in a computer processor".
Accordingly, Applicant respectfully submits that the rejection is overcome and respectfully requests that the rejection be withdrawn for at least the reasons discussed above.