More on Enablement’s

Commensurability Requirement
scope of enablement

PHOSITA’s
knowledge
and skill

Teaching
Claim Scope Sought
+ provided by
applicant

PHOSITA
commensurate?

At the time of filing, could the PHOSITA make and use the full scope of the claimed invention
without undue experimentation?

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 Wands factors

• The BREADTH of the claims;

• The NATURE of the invention;
• The state of the prior art;
• The PHOSITA’s knowledge/level of skill;
• The LEVEL OF PREDICTABILITY in the art;
• The AMOUNT OF DIRECTION PROVIDED by the inventor;
• The existence of WORKING EXAMPLES; and
• The QUANTITY OF EXPERIMENTATION NEEDED to make or
use the invention based on the content of the disclosure.

In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)

PHOSITA
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 Enablement:
Predictable/Unpredictable Dichotomy
Unpredictable arts.
• Includes chemistry and the experimental sciences.
• PHOSITAs often cannot predict if a reaction protocol that works for one embodiment will work
for others.
• Thus, the applicant typically must enable multiple embodiments with a SPECIFIC AND
DETAILED TEACHING because there is a danger that embodiments not so described either
cannot be made or may require unduly extensive experimentation.

Predictable arts.
• Includes applied technologies like mechanical engineering which are rooted in well-defined,
predictable factors.
• Historically, the CAFC took the position that in the predictable arts, “[the] disclosure of a
SINGLE EMBODIMENT CAN ENABLE A BROAD CLAIM.” See Cedarapids.

But times are changing . . . .

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62
 Enablement

Enabled subject matter: Everything the

PHOSITA can make and use from
Described reading the written description

Enabled • Sets the outer boundaries of permissible

claim scope

• An applicant can describe more than he

Actual or she enables!
Work

PHOSITA

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 Lack of Enablement

Enabled subject matter:

Everything the PHOSITA can
Claimed make and use from reading the
written description

Enabled

Actual
Work
PHOSITA

“The enablement provided is incommensurate with the claim scope sought.”

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