In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient "evidence" that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here .
The Appellant, a chemical company, was appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the Examiner concluded that one of ordinary skill in the art would not have been able to construct the claimed invention, a fullerene molecule, based on the specification. The Appellant responded by submitting a Declaration, or Affidavit, from one of ordinary skill in the art stating that, in fact, one of ordinary skill in the art WOULD HAVE BEEN ABLE to construct the fullerene molecule based on the specification.
The BPAI decided: "We will not sustain this rejection because in our view, the Appellants have submitted evidence sufficient to establish that a person of ordinary skill in the art would have been able to make and use the claimed invention. The Second Declaration of Joseph Talnagi is evidence that a person of ordinary skill in the art would know how to ... Mr. Talnagi lastly states that a person of ordinary skill in the art would conclude that ... We conclude that the second declaration of Mr. Talnagi is sufficient to rebut the Examiner's case of lack of enablement."
The important lesson here is that a Patent Examiner's 35 U.S.C. § 112, first paragraph, enablement rejection can be successfully rebutted using a § 1.132 Affidavit. If you can provide an Affidavit from one of ordinary skill in the art stating that he/she WOULD HAVE BEEN ABLE to construct the claimed invention based on the specification, you've got a potential premise for reversal on Appeal.
Affidavits should be a part of every Patent Attorney's toolbox and can be used to fight other types of rejections, such as 35 U.S.C. § 103 obviousness rejections, as discussed in my previous blog post.