It is quite common to see an patent application disclose a few specific embodiments of an invention within its specification, but then include claims that are generic and which attempt to sweep in a significant number of undisclosed embodiments. If claims cover other versions of an invention that are not specifically disclosed by the specification, would it be fair to say that those versions were "enabled" by the specification?
Courts have said that the enabling disclosure in the specification must be "commensurate in scope" with the breadth of the claims. See, e.g., Chiron Corp. v. Genetech Inc., 363 F.3d 1247, 1253 (Fed. Cir. 2004). However, in actual practice, inventions from different fields of technology are treated differently by the courts. For example, if the invention is a mechanical device or an electrical circuit, the art is regarded as predictable, meaning that if one embodiment of the invention is disclosed, persons skilled in the art will understand how to make and use other variations. Other arts, such as chemistry and biotechnology, are considered relatively unpredictable -- even a tiny change in the structure of a molecule, for example, may have large and unanticipated effects.
One patentee claimed all possible sequences of DNA that would produce the protein EPO, which stimulates the production of red blood cells, or any analog of EPO that would have a similar effect. The specification disclosed the information needed to prepare EPO and just a few of its analogs. The Federal Circuit found that the number of possible DNA sequences within the scope of the claim vastly outstripped the enabling disclosure: "There may be many other genetic sequences that code for EPO-type products. [The patentee] has told us how to make and use only a few of them and is therefore not entitled to claim all of them." Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1213-14 (Fed. Cir. 1991).
Courts have said that the enabling disclosure in the specification must be "commensurate in scope" with the breadth of the claims. See, e.g., Chiron Corp. v. Genetech Inc., 363 F.3d 1247, 1253 (Fed. Cir. 2004). However, in actual practice, inventions from different fields of technology are treated differently by the courts. For example, if the invention is a mechanical device or an electrical circuit, the art is regarded as predictable, meaning that if one embodiment of the invention is disclosed, persons skilled in the art will understand how to make and use other variations. Other arts, such as chemistry and biotechnology, are considered relatively unpredictable -- even a tiny change in the structure of a molecule, for example, may have large and unanticipated effects.
One patentee claimed all possible sequences of DNA that would produce the protein EPO, which stimulates the production of red blood cells, or any analog of EPO that would have a similar effect. The specification disclosed the information needed to prepare EPO and just a few of its analogs. The Federal Circuit found that the number of possible DNA sequences within the scope of the claim vastly outstripped the enabling disclosure: "There may be many other genetic sequences that code for EPO-type products. [The patentee] has told us how to make and use only a few of them and is therefore not entitled to claim all of them." Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1213-14 (Fed. Cir. 1991).
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