CHAPTER 4 Outline

• Jurisdiction: United States

CHAPTER 4

The Enablement Requirement

§4.01 Introduction

[A] The Disclosure Requirements of 35 U.S.C. §112(a)

[B] Bargain/Exchange Theory

[C] Enabling "How to Make" and "How to Use"

[D] Filing Date as Measure of Disclosure Compliance/New Matter Prohibition

[1] Incorporation by Reference

[2] Biological Deposits

[3] Timing for Enablement Versus Novelty/Nonobviousness

§4.02 Undue Experimentation

[A] Wands Factors Framework

[B] Predictability of the Technology

[1] Generally Predictable Technologies

[2] Generally Unpredictable Technologies

[3] Exceptions to General Rule

[C] Scope of Enabling Disclosure Versus Scope of the Claims

[1] "Reasonable Correlation" Standard

[2] "Full Scope" Enablement

[D] Use of Working and Prophetic Examples

[1] Types of Example

[2] Working Examples Not Mandatory

§4.03 Nascent and...