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(Message started by: dab2d on Dec 16th, 2007, 11:32pm)

Title: Enablement of Broad Claim, limited disclosure???
Post by dab2d on Dec 16th, 2007, 11:32pm
I was just wondering if there is a possible enablement issue with a broad claim of Patent A, if the disclosure fails to anticipate a later invention that is covered by the claim.

Would it help if Patent A was actually cited in Patent B and the claim of Patent A would cover the invention as claimed and disclosed by patent B.

My idea is that if there is a novel, patentable invention that is not anticipated by Patent A, yet covered by the claim of Patent A, the the claim of Patent A is not fully enabled and thus invalid.

Please let me know if you think my logic is flawed or if you know of a case on point.


Title: Re: Enablement of Broad Claim, limited disclosure?
Post by DJoshEsq on Dec 17th, 2007, 12:24am
slow down...enablement, anticipation and infringement are separate issues.  

"My idea is that if there is a novel, patentable invention that is not anticipated by Patent A, yet covered by the claim of Patent A'

This may happen when there is a patentable improvement on what is disclosed in patent A. Let's say for example patent A covers a pen.  And the novel invention is a cap connectable to the pen.  The cap and pen is not anticipated by patent A, yet the pen with the cap would infringe a claim on the pen.

This is just an overly simplistic example.

Title: Re: Enablement of Broad Claim, limited disclosure?
Post by dab2d on Dec 17th, 2007, 11:03am

on 12/17/07 at 00:24:55, DJoshEsq wrote:
slow down...enablement, anticipation and infringement are separate issues.


This may happen when there is a patentable improvement on what is disclosed in patent A. Let's say for example patent A covers a pen. And the novel invention is a cap connectable to the pen. The cap and pen is not anticipated by patent A, yet the pen with the cap would infringe a claim on the pen.

This is just an overly simplistic example.


Thanks for replying. Lets use your example and say that Patent A puts forth several embodiments for a pen cap. Patent A goes on further to claim "a cap that resides on the end and covers the tip." Then you find Patent B that claims a different embodiment for a cap and claims that embodiment. Patent A was cited in Patent B, but failed to anticipate or render Patent B obvious. Wouldn't that lend weight to an argument that the claim of Patent A is not fully enabled. Keep in mind that the bar for anticipatory enablement is lower that that of 112.

The situation that I find myself in is that I found Patent A. I believe that Patent A has a claim that is so broad that is invlaid because of lack of enablement in view of the disclosure and the scope of the art at the time of disclosure. There are at least 20 ways to do what is claimed that are not disclosed. Addtionally the claim in question was added, and thus cannot be considered to be part of the orginal disclsoure. When researching Patent A, I came accross Patent B that cites Patent A. The entire disclosure of Patent B is covered by Patent A's claim. Thus if Patent A was not enough to render Patent B obvious or anticipated, then does it tend to show that the claim of Patent A was not fully enabled? Argument being that here is an embodiment that falls under the claim of Patent A yet was not taught by patent A. How can Patent A lay claim to things that were not disclosed.



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