text version - enablement decision tree
ENABLEMENT DECISION TREE Text Version
*Example: If scientific technical reasons cannot be given or properly supported with sufficient evidence, then the answer to the previous question should have been "yes".
- Analyze each claim as a whole.
- Search the prior art.
- Consider the undue experimentation factors with respect to the claims as a whole and the specification.
- Does the specification teach how to make and use at least one embodiment encompassed by the claims as a whole without undue experimentation?
Note: If there is a working example, the answer to the question cannot be "No". The answer also cannot be "No" if the sole reason is the lack of working example.
4.1 No - Write a rejection using form paragraph 7.31.002. Give specific reasons and make sure that any relevant issues regarding the breadth of the claims relative to the guidance in the disclosure are raised. *
4.2 Yes -
Are the enabled embodiments representative of the full scope of the claim?
4.2.1 Yes - No enablement rejection.
4.2.1 No - Write a scope rejection using form paragraph 7.31.03 and/or 7.33.01. Give specific reasons why the working examples or enabled embodiments are not sufficient to enable the breadth of the claims.*