【判例】112與102的enablement要件比較
http://fedcir.gov/opinions/04-1191.pdf揭露一發明卻沒有揭露它的用途，還不夠符合美專112的enablement要件。
Rasmusson argues that the Board’s finding regarding efficacy does not support its finding of lack of enablement. According to Rasmusson,
efficacy is not relevant to enablement, but
pertains only to the issue of utility under 35 U.S.C. § 101.Because the Board did not make a determination based on section 101, Rasmusson asserts that the Board erred.
We disagree. In order to satisfy the enablement requirement of section 112, an applicant must describe the manner of making and using the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make , 992 F.2d 1197, 1200 (Fed. Cir. 1993); see also and use the same . . . .” 35 U.S.C. § 112, para. 1.
如何才算符合美專112的enablement要件
As this court has explained, “
the how to use prong of section 112 incorporates as a matter of law
the requirement of 35 U.S.C. § 101 that the specification disclose as a matter of fact a practical utility for the invention.” In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999), quoting In re ZieglerIn re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (stating that
utility must be disclosed to satisfy the section 112 enablement requirement).
In explaining what constitutes a sufficient showing of utility in the context of the enablement requirement, this court has stated that
an applicant’s failure to disclose how to use an invention may support a rejection under either section 112, paragraph 1 for lack of enablement, or “section 101 for lack of utility ‘when there is a complete absence of data supporting the statements which set forth the desired results of the claimed invention.’” Cortright, 165 F.3d at 1356, quoting Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 762 (Fed. Cir. 1984).
In the context of determining
whether sufficient “utility as a drug, medicant, and the like in human therapy” has been alleged, “it is proper for the examiner to ask for substantiating evidence unless one with ordinary skill in the art would accept the allegations as obviously correct.” In re Jolles, 628 F.2d 1327, 1332 (Fed. Cir. 1980), citing In re Novak, 306 F.2d 924 (CCPA 1962); see Application of Irons, 340 F.2d 974, 977-78 (CCPA 1965).
Indeed, in In re Brana, 51 F.3d 1560 (Fed. Cir. 1995), we stated that “a specification disclosure which contains a teaching of the manner and process of making and using the invention . . . must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support.” , 492 F.2d 859 (CCPA 1974); Application of Hawkins, 486 F.2d 569, 576 (CCPA 1973).
However, where there is “no indication that one skilled in [the] art would accept without question statements [as to the effects of the claimed drug products] and no evidence has been presented to demonstrate that the claimed products do have those effects,”
an applicant has failed to demonstrate sufficient utility and therefore cannot establish enablement. Novak, 306 F.2d at 928. Id. at 1566, quoting Marzocchi, 439 F.2d 220, 223 (CCPA 1971); Fiers v. Revel, 984 F.2d 1164, 1171-72 (Fed. Cir. 1993), quoting Marzocchi, 439 F.2d at 223; see also Application of Armbruster, 512 F.2d 676, 677 (CCPA 1975); Application of Knowlton, 500 F.2d 566, 571 (CCPA 1974); Application of Bowen
為什麼“
an applicant has failed to demonstrate sufficient utility”會造成
“
and therefore cannot establish enablement”呢？
Rasmusson argues that the enablement requirement of section 112 does not mandate a showing of utility or, if it does, it mandates only a showing that it is “not implausible” that the invention will work for its intended purpose. As we have explained, we have required a greater measure of proof, and for good reason. If mere plausibility were the test for enablement under section 112, applicants could obtain patent rights to “inventions” consisting of little more than respectable guesses as to the likelihood of their success. When one of the guesses later proved true, the “inventor” would be rewarded the spoils instead of the party who demonstrated that the method actually worked. That scenario is not consistent with the statutory requirement that the inventor enable an invention rather than merely proposing an unproved hypothesis.
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美專102的enablement要件
A patent claim “
cannot be anticipated by a prior art reference
if the allegedly anticipatory disclosures cited as prior art are not enabled.” Elan Pharm., Inc. v. Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003).
The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102, however, differs from the enablement standard under section 112. In In re Hafner, 410 F.2d 1403 (CCPA 1969), the court stated that “a disclosure lacking a
teaching of how to use a fully disclosed compound for a specific, substantial utility
or of how to use for such purpose a compound produced by a fully disclosed process
is, under the present state of the law,
entirely adequate to anticipate a claim to either the product or the process and,
at the same time, entirely inadequate to support the allowance of such a claim.” Id. at 1405; see Schoenwald, 964 F.2d at 1124; In re Samour, 571 F.2d 559, 563-64 (CCPA 1978).
The reason is that section 112 “provides that the specification must enable one skilled in the art to ‘use’ the invention whereas [section] 102 makes no such requirement as to an anticipatory disclosure.” Hafner, 410 F.2d at 1405; see 1 Donald S. Chisum, Chisum on Patents § 3.04[1][c] (2002); see also In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349-52 (Fed. Cir. 2001) (finding anticipation where applicant sought a patent based on a new use for a previously disclosed method).
Since Hafner,
this court has continued to recognize that a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102. See Schoenwald, 964 F.2d at 1124 (“it is beyond argument that no utility need be disclosed for a reference to be anticipatory of a claim”); In re Donohue, 632 F.2d 123, 126 n.6 (CCPA 1980) (“proof of utility is not a prerequisite to availability of a prior art reference under 35 U.S.C. § 102(b)”), citing In re Samour, 571 F.2d at 563-64; see also Application of Lukach, 442 F.2d 967, 969 (CCPA 1971) (recognizing that there are “anomalies between the requirements for claim-anticipating disclosures and for claim-supporting disclosures” and citing Hafner as an example).
其他102相關
The court decided that the negative results reported in the article did not prevent the article from anticipating the patent given that “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”236 F.3d at 1376.
The court explained that “a reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.” Id. at 1378., quoting Celeritas Techs., Ltd. v. Rockwell Int’l Group, 150 F.3d 1354, 1361 (Fed. Cir. 1998). The court added that “anticipation does not require actual performance of suggestions in a disclosure.” 246 F.3d at 1379.
