IP Law Daily, PATENT—Fed. Cir.: Patent application for certain metallole polymers lacked enablement, (Jun 12, 2024)

By Kevin M. Finson

A patent application was rejected for lack of enablement because it would require undue experimentation and the determinations of the Examining Attorney and PTAB were based on substantial evidence.

A patent applicant failed to show error in the rejection of patent claims directed to metallole polymers with polycyclic repeating units for lack of enablement on the ground that the claims would require undue experimentation, the U.S. Court of Appeals for the Federal Circuit has held. The underlying Patent Trial and Appeal Board’s decision was supported by substantial evidence, (In re The Pen, No. 2023-2282 (Fed. Cir. June 12, 2024)).

The Pen (Pen) was the applicant in U.S. Patent Application No. 16/104,878 (the ’878 application), which was directed to metallole polymers with a polycyclic repeating unit backbone. The Examining Attorney rejected claims 1, 4-6, 10, and 13 for lack of enablement. Pen appealed to the Patent Trial and Appeal Board (PTAB), which affirmed. Pen then appealed to the Federal Circuit.

Enablement. The Examining Attorney had rejected the claims because the number “n” of repeating units was unlimited but at least eight, while the prior art had only obtained metallole polymers with an “n” of up to eight, and there was not a sufficient direction provided in the written description on the subjects of material selections and synthetic routes to obtain the claimed metallole polymer.

Pen argued that the Board erred by relying on precedent not cited by the Examining Attorney, but the Federal Circuit found no error in the Board using additional citations to explain its decision in detail when that decision was based on the arguments made before it. The court reviewed the record which had been before the Board and found no error in the Board’s assessment that the Examining Attorney’s rejections were supported by substantial evidence. Pen may have shown that some embodiments were enabled, but there was nothing in the record to show enablement of the entire class of metallole polymers claimed.

The court affirmed the Board’s rejection of the claims for lack of enablement.

The Case is No. 23-2282.

Judge: Per curiam.

Attorneys: The Pen, pro se. Mary L. Kelly, U.S. Patent and Trademark Office, for Katherine K. Vidal.

Cases: Patent FedCirNews USPTO