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[bakhus]

I understand that there are several reason to describe elements in detail, like enablement, 112p6 alternatives, any other reasons? (PS. How is enablement measured?)
There are also reasons not to describe an element in detail, like conciseness, and the possibility that the details would be interpreted as limitations, any other reasons?

How much detail should be written when describing an element?

[JimIvey]

Well, enablement is the big one.  There's also the best mode requirement -- that the best mode contemplated by the inventor(s) for practicing the invention must be described.  In other words, no hiding preferred implementation details.

Wanting to avoid limitations is not a legitimate reason for leaving details out of the specification.  The details are required.  Avoiding exportation of details to the claims is a skill we all have to develop.

Regards.

[khazzah]

How is enablement measured?

By the POSITA standard. POSITA= (hypothetical) person of ordinary skill in the art.

The specification must describe the claimed invention in enough detail that a POSITA can make and use the claimed invention at the time of filing without undue experimentation. If you want to learn more about what that means, Section 2164 in the MPEP is a good place to start.

How much detail should be written when describing an element?

Enough to comply with 112 1st (enablement, written description and best mode). As many details *about the novelty* as you have. And to echo what JimIvey said, this should all be written in such a way that limitations not explicitly recited in the claims are not imported into the claims.

I find that the closer your own experience is to that of a POSTITA, the easier it is to judge how much detail is appropriate. My background as a software developer tells me that "Java virtual machine" is a term of art so I won't spend pages explaining it. My background also lets me quickly determine that "workflow manager" is a term made up by the inventors and needs more explanation.

When a technology area is new to you, you are more likely to write too much or too little. After you've gotten some apps under your belt in that same area -- and had feedback from a reviewer and the inventors -- then you'll get better at knowing what to put in and what to leave out.

While I'm happy to provide my opinion about these sorts of topics, if "how to write a spec" could be explained in a forum post, clients wouldn't pay us as much as they do. This knowledge instead comes from hard work, a desire to learn, and hopefully, some feedback and mentoring.

[bakhus]

Is the answer then, that there is no need to repeat anything that is explained elsewhere in some publication?

[khazzah]

Is the answer then, that there is no need to repeat anything that is explained elsewhere in some publication?

Nah, I wouldn't agree with such a simple, black and white statement. I would say that the more a POSITA knows about the components you claim, the less you need to say about them.

[bakhus]

OK.

How do I know who the POSITA is going to be? When in need for a POSITA for a case, how does the court select one?

[Monkey1]

As many details *about the novelty* as you have. And to echo what JimIvey said, this should all be written in such a way that limitations not explicitly recited in the claims are not imported into the claims.

Also, I would describe as many angles and scopes involving the novelty as you have.  Chances are most, if not all, of the initial set of claims will be rejected.  To add any limitations regarding the novelty to the claims to overcome the 102/103 rejections, the limitations have to be supported by the original specification.

[Ghoti]

Re: Who is the relevant POSITA?

35 U.S.C. 112 para. 1. - “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same...”

“The statue thus allows the drafter to assume that the reader has sufficient knowledge to be able to comprehend the subject matter without requiring the specification to incorporate a primer on the relevant technical field.” - From Kahral.

I think the easiest way to get a feel for how much to write is to look at a few of the closest prior art patents (assuming that they are in the same field of invention).

Another quote, but not from a US text, though I think it is useful… “the characteristics of person skilled in the art, such as their qualifications, their degree of experience, the practices and techniques that they regard as common place and the setting in which and the resources with which they operate are determined by the field of knowledge to which the invention relates and their determination commences with an identification and characterization of that field of knowledge.”

Hope that helps a bit.

[JimIvey]

How do I know who the POSITA is going to be? When in need for a POSITA for a case, how does the court select one?

When you're drafting an application, you're not going to have answers to either one of those.  So, you have to guess. 

Let's say you guess that the level of ordinary skill is higher than the court ultimately determines.  Your claim is invalid.

On the other hand, if you assume a lower level of ordinary skill than the court will, you've written a bit more than you needed to and your client might have paid some marginal, additional amount for that work, though they would probably have had to pay a higher hourly rate for someone with enough experience to cut that closer to the minimum.  The claim remains valid and enforceable (at least for that particular challenge).

So, over disclosure is generally the better way to go.  When in doubt, spell it out.

Regards.

[klaviernista]

Another big consideration when drafting the application is prosecution flexibility.  In many instances, it is possible to identify "hard spots" from the patentability search, i.e., places where the art is close, or provides some amount of suggestion to do what the applicant has done.  In those instances, I try to draft a lot of flexibility into the application, so that if the issues I see from the patentability search arise during prosecution, I can still move the application forward. 

Also, I always ask myself "what might the applicant want to claim in Europe or China?"  Any answer to that question gets drafted into the application?  Why?  Because the written description requirement in places like China and Europe is much more strictly enforced than in the US.

[patentsusa]

When you're drafting an application, you're not going to have answers to either one of those.  So, you have to guess. 

Let's say you guess that the level of ordinary skill is higher than the court ultimately determines.  Your claim is invalid.

I agree.  Make the person of ordinary skill in the art pretty dumb.   If you make him or her a PhD, then it is more likely that the invention would be obvious to this person.

[IntelProp007]

Focus on describing the invention itself, not what is known. That's why many practitioners start with the claims and then draft the spec using the claims as a blueprint.

[Isaac]

I agree.  Make the person of ordinary skill in the art pretty dumb.   If you make him or her a PhD, then it is more likely that the invention would be obvious to this person.

Do you believe you can influence the level of skill that the examiner will use in an obviousness determination by writing down to a lower level of skill when drafting your application?   I haven't given that idea much thought, but I don't see how that technique would work.