PTO Board Places Enablement Burden on Examiner

Ex parte FALSAFI (BOARD OF PATENT APPEALS AND INTERFERENCES) (2004) (Unpublished)

During prosecution of their patent application for a new dental cement composition, the applicants added the term “about” to modify an upper concentration range. The Examiner rejected addition of “about,” arguing that the broadened claims were not enabled.

The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. Extending the claimed range beyond the range described in the specification is not enabling and is new matter.

On appeal, the BPAI overturned the Examiner’s rejection, holding that the Examiner had not “met the required burden of proof for a rejection based on lack of enablement.”

The claims are directed to a dental composition and nothing in the specification indicates that minor differences in concentration render the composition unsuitable. The Examiner simply has provided no basis for the conclusion that one of ordinary skill in the art would not have been able to make the dental compositions at the slightly higher levels of the claims, if, indeed, the upper levels are outside the ranges discussed in the specification.