Interplay of enablement with written description

As to written description, IPWatchdog contains the following:



The third description requirement is the written description requirement, which is also found in 35 U.S.C. §112(a).
The written description requirement is separate and distinct from the enablement requirement, although related in
important ways. The written description requirement serves a teaching function, as a “quid pro quo” in which the
public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.

Still confused as to what this means? If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in the patent application adequately defined the full parameters of the invention being claimed. Today, the written description requirement means much more, but the Federal Circuit has yet to be able to articulate the requirements in a truly easy to explain way.


Perhaps the key to understanding the difference between enablement and the written description requirement is
that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but
no such bootstrapping is allowable under the written description requirement. If you leave something out
it is not a part of your written description even if someone of skill in the art would understand that you left
something out. In this sense the written description requirement is a “four corners” requirement. What you include
in your patent application defines the possible extent of the exclusive rights you will obtain, nothing more.
Once it is known what is in the four corners of your patent application and, therefore, the invention that you
actually possess, the law then turns to the enablement question and asks whether one of skill in the art would know
how to make and use the invention. In this regard the written description requirement and the enablement requirement
are similar and directly related, yet separate requirements.



link: http://www.ipwatchdog.com/2017/06/24/patentability-adequate-description-requirement-35-u-s-c-112/id=85039/

One recalls the recent CAFC case Storer v. Clark, which included text:


The Board agreed with Clark’s position, and held that
the S1 provisional’s description of the 2´-keto precursor, in
combination with the Matsuda reference, was insufficient
to enable and thereby to establish possession of the
2´F(down) methyl(up) compound of claim 1 before Clark’s
priority date. The Board stated, correctly, that for new
chemical compounds the specification must provide sufficient
guidance that undue experimentation is not required
to obtain the new compounds.



link: http://ipbiz.blogspot.com/2017/06/cafc-affirms-ptab-in-storer-v-clark.html

Separately, from blawgsearch on June 26, 2017:

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As to recent cases involving "lack of written description,"

apart from Storer, 2017 U.S. App. LEXIS 10945 (June 21, 2017): The Board agreed with Clark's position, and held that the S1 provisional's description of the 2´-keto precursor, in combination with the Matsuda reference, was insufficient to enable and thereby to establish possession of the 2´F(down) methyl(up) compound of claim 1 before Clark's priority date. The Board stated, correctly, that for new chemical compounds the specification must provide sufficient guidance that undue experimentation is not required to obtain the new compounds. ,

RIVERA v. ITC . 857 F.3d 1315; 2017 U.S. App. LEXIS 8931 . "For the foregoing reasons, we affirm the Commission's conclusion that claims 5-7, 18, and 20 are invalid for lack of written description"

Cisco v. Cirrex, 856 F.3d 997; 2017 U.S. App. LEXIS 8264; 122 U.S.P.Q.2D (BNA) 1595: "Substantial evidence supports the Board's finding of lack of written description support for the diverting element claims. Because we affirm the Board's finding of lack of written description support, we need not and do not reach the Board's alternate grounds for unpatentability of the diverting element claims."