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[Paterno]

OK, I realize ReExaminations can only use patents or printed publications.  Often, they are used to invalidate (or on occasion strengthen) the patent for §102 or §103 reasons.  Why cannot one use the same to attack §112 Enablement and/or Written Description?

I would argue that printed publications (including patents) could be used to show that the patent could not possibly have been enabled at the time of filing.  A similar argument could be made for lack of written description (e.g. inventor could not possibly have been in possession of the claimed invention).

Thoughts?

[AnotherCog]

You have to remember that reexamination is concerned with "substantial new questions of patentability."  Post-issuance §112 questions don't really fall into that category.  In theory, the examiner is one skilled in the art and has already reached the conclusion that the patent satisfies §112.  So, at best, you have a difference of professional opinions, not a new question of patentability. 

[Isaac]

I would argue that printed publications (including patents) could be used to show that the patent could not possibly have been enabled at the time of filing.  A similar argument could be made for lack of written description (e.g. inventor could not possibly have been in possession of the claimed invention).

I would suggest that it is be impossible to show new question of patentability based on a lack of written description using documents, and that showing a new question of a lack of enablement within the document using new references is possible but probably difficult in most cases.  I don't think there is any statutory reason preventing you from trying to use 112, 1st paragraph, but I suspect that there is simply a low probabilty of success.

[khazzah]

I would argue that printed publications (including patents) could be used to show that the patent could not possibly have been enabled at the time of filing.  A similar argument could be made for lack of written description (e.g. inventor could not possibly have been in possession of the claimed invention).

I disagree with AnotherCog: I read "new question" as anything the Examiner didn't consider. But I admit I haven't researched this.

I agree with JimIvey, and am curious about how Paterno would use *documents* to show a 112 problem. Documents can show what other people knew, but how do they show what the *inventor* possessed? Or even how what the spec taught wasn't enough to make and use?