【說明書】enablement requirement

05-1062

LIZARDTECH, INC., v. Earth Resource Mapping Ltd.

Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine. The single embodiment would support such a generic claim only if the specification would “reasonably convey to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of filing.

Thus, a patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed.

While it is true that an originally filed claim can provide the requisite written description to satisfy section 112

一個“enablement requirement”的判決

如果一份說明書僅揭示一種實施例，若要請求較廣的範圍時，必需是「the specification would “reasonably convey to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of filing.」

原本的請求項文字說明，是可以用來當作“written description”來滿足112條的“enablement requirement”。但本案的請求項21的文字說明並無法令該行業者了解“the inventor had possession of the claimed subject matter at the time of filing.”。

自己的想法：
為取得較大的權利範圍，請求項的文字通常較“廣泛”，因此要滿足該行業者了解“the inventor had possession of the claimed subject matter at the time of filing.”會比較小，我覺得。所以，最好於說明書中提供較多的實施例，較能確保對發明的保護。