Enablement Rejections of The Patent Office Can Be Rebutted Using Affidavits

MARK TERRY, ESQ.

In Ex Parte Schaefer, the Board of Patent Appeals and Interferences reversed a rejection for lack of enablement under 35 U.S.C. § 112, first paragraph, after the applicant submitted evidence showing that a person of ordinary skill could make and use the claimed invention.

The application concerned a fullerene molecule. The examiner concluded that the specification did not provide enough information for a skilled person to construct the claimed molecule.

The applicant responded with a declaration from a person of ordinary skill stating that the disclosure would have enabled a skilled person to construct the molecule. The Board treated that declaration as evidence and found it sufficient to rebut the examiner’s position.

The decision shows that an enablement rejection can sometimes be overcome with a declaration under 37 C.F.R. § 1.132 when the declaration directly addresses what a skilled person would understand and be able to do from the specification.

Practical takeaway: Unsupported attorney argument may not be enough. A technically qualified declarant who explains why the disclosure is enabling can provide the evidentiary record needed for reversal.