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The patentability requirements are mostly novel, non obvious, and useful, which doesn't say enablement, i.e. anything that novel, non obvious, and useful can be patented. But to get the patent it needs to teach skilled man in the art how to make and use the invention.

(1) What if it does not teach the man in the art but man in higher skilled art? For example, let say a new fan, which implements a new aerodynamics method for higher efficiency. This is not easy to understand for ordinary fan maker, but it is just a normal knowledge for aerodynamics engineers, e.g. plane designer.

So, from aerodynamics engineers point of view, it is very hard to teach normal fan maker to understand and calculation in higher aerodynamics, which may require a very lengthy description, e.g. full courses of maths to learn from normal physics to higher physics, which is very unrealistic for a patent description.

But the actual underlying problem is very simple, just hire an aerodynamics engineer to solve it and make it.

(2) Can this method be used in patent description, e.g. just hire someone out there, because the art is already exist. And save a lengthy description, because there is no need to describe something already known.

(3) So who can choose which art the invention is related to? If it needs to teach ordinary fan maker to understand the complex aerodynamics then it is quire hard to acquire that patent. But if it is considered an higher aerodynamics field then it can be very short and easy.

(4) What if the inventor chooses the wrong art? E.g. the inventor describes the invention for aerodynamics engineer, short and abstract, but the uspto chooses that it belongs to fan maker, which require a very long description. Is there any court on this matter?

  • in my opinion statement and methods 'incorporated herein by reference only' solves most of the issues for enablement. Please keep in mind that its not responsibility of applicant to teach entire areodynamics to POSITA but its responsibility to tell him methods to MAKE what applicant is claiming for. – Pushpak Jan 15 '15 at 5:21
  • Interesting - but it seems like multiple questions, which may be closely related - could you try to separate parts to make new questions from it where it makes sense? (Not sure it does - I feel I do not have the big picture after reading; And that's the very reason I comment here.) – Volker Siegel Jan 16 '15 at 6:39
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This is a neat set of questions. Here are some of my thoughts related to it:

1) In your example, you are making a fan with very specialized fan blades. I don't think that a normal fan maker is someone of ordinary skill in the art. Because the patent is related to aerodynamics issues for making a very specific and specialized fan blade, one of the art would be the aerodynamics engineer and not an "ordinary fan maker".

So you would write the specification based on the assumption that someone knows how to make a fan, but describes the special fan blade using the aerodynamics concepts known to the engineer.

2) There is a requirement in the US patent system to have a description that allows one of ordinary skill to make and use the patented device. So, you can't have a description that just says "hire an engineer. They can figure it out." The description is there to describe what you have solved/created so that other people don't have to figure it out.

Also, if the stuff in the patent is "already known", then the patent would be failing the novelty part of the equation because someone else already knows about it.

3) While the patent is being examined, the patent examiner and the lawyers for the application determine the field of art for the application. If they disagree, the application will end up going into the court system to make that determination.

4) If the USPTO disagrees with the description as being to vague or whatnot, they would issue a rejection/objection to parts of the patent application. There are multiple ways that the problems could be fixed. I won't go into into the different ways since this is more a theory question than detail question.

Finally

Here is a link to the USPTO website with the part of the MPEP directly related to the Enablement Requirement.

http://www.uspto.gov/web/offices/pac/mpep/s2164.html

Section 2164.05(b) talks about the person of skill in the art. It even discusses how different sections of on application might apply to people from different arts.

Sections 2164.06(a), (b), and (c) talk about various court decisions related to if a specification was or was not enabling.

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