Enablement Traversal - Version 2
As discussed in one of our earlier topics, the Examiner, on occasion, may set forth a rejection alleging that a particular claim fails to satisfy the enablement
requirement under the first paragraph of 35 U.S.C. § 112. However, to set forth a proper rejection, the Examiner must consider all of the factors laid on in the
In re Wands case, and failure to consider all of the factors would be improper. Therefore, the following example can be used in the case where the Examiner has
not considered all of the Wands factors.
The Office Action rejected claim X under the first paragraph of 35 U.S.C. § 112 for allegedly failing to comply with the enablement requirement. In particular, the
Office Action, on page [ENTER PAGE NUMBER], alleged that the feature [ENTER FEATURE AT ISSUE] was not enabled by the disclosure. This rejection, however, is
respectfully traversed as follows.
Before rejecting a claim as failing to comply with the enablement requirement, the Office must determine whether undue experimentation is needed. To determine whether
the necessary experimentation is undue, the Office must at least rely on all eight (8) of the Wands factors laid out in MPEP § 2164.01(a). In addition, the
Office’s analysis must consider all the evidence related to each of the Wands factors, and any conclusion of nonenablement must be based on the evidence as a
whole (See MPEP § 2164.01(a)).
In this case, the Office not only failed to consider all of the Wands factors, but also failed to consider all the evidence related to each of the Wands
factors. See, for example, the Office Action’s general conclusory statements on page [ENTER PAGE NUMBER]. Therefore, Office’s general allegations that claim X fails to
satisfy the enablement requirement is clearly erroneous, and the rejection must be withdrawn.