“inoperative”、”enablement” 的區別

“inoperative”、”enablement”區別

要學會“用字”還真難，感覺上這幾個字的意思都很像，可是法官卻用來表達他們想要表達的不同意思。

http://www.chanesq.com/cases/cases16.html

The district court essentially concluded that the invention claimed in the patents at issue simply did not work, that is, could not clean wafers, and therefore it would require undue experimentation to carry out the invention. See 35 U.S.C. § 101 (2000). This court has recognized the relationship between the enablement requirement of § 112 and the utility requirement of § 101. See, e.g., In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) ("[I]f the claims in an application fail to meet the utility requirement because the invention is inoperative, they also fail to meet the enablement requirement because a person skilled in the art cannot practice the invention"); EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1348 (Fed. Cir. 2001). In this case, however, the district court similarly set the standard for utility too high for this invention. While the district court's major premise is correct that an inoperable invention is not enabled, the district court erred in its minor premise that the claimed invention is inoperable and lacks utility.

The inoperability standard for utility applies primarily to claims with impossible limitations. See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999) (claims found inoperable because they require violating the principle of conservation of mass); Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989) (claims to a perpetual motion machine ruled inoperable). Moreover, where a patent discloses several alternative combinations of methods (as most systems claims will), the party asserting inoperability must show that all disclosed alternatives are inoperative or not enabled. EMI Group, 268 F.3d at 1349. The '532 and '123 patents do not claim an impossible result or an inoperative invention.

Even if the single Full Flow embodiment does not achieve complete cleaning, that alone would not render the invention inoperative.



再參考MPEP 2164.07 的內容
For example, if an applicant has claimed a process of treating a certain disease condition with a certain compound and provided a credible basis for asserting that the compound is useful in that regard, but to actually practice the invention as claimed a person skilled in the relevant art would have to engage in an undue amount of experimentation, the claim may be defective under 35 U.S.C. 112, but not 35 U.S.C. 101.


http://www.patent-tutorial.net/content/forum/1880
這裏提到的是若有「limitation impossible to meet」是違反 § 112，而不是§ 101。

"a claim containing a limitation impossible to meet may be held invalid under § 112. Moreover, when a claim requires a means for accomplishing an unattainable result, the claimed invention must be considered inoperative as claimed and the claim must be held invalid under either § 101 or § 112 of 35 U.S.C."

一些自己的想法。
如果是在還沒有發明“電燈”的年代。
「電燈、電發光裝置」，就是屬於「limitation impossible to meet」。但是並不屬於「a means for accomplishing an unattainable result」。

如果是在還沒有發明“電”的年代。
也許「電燈、電發光裝置」就會被認為「a means for accomplishing an unattainable result」。更嚴重一點也許發明人會被是個瘋子也說不定。

「電發光裝置」屬於功能性用語，對於這種用語的解釋很多需要考慮到現行技術的水平。