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"Full scope" enablement -- i.e. that the entire scope of the claim is enabled under 35 USC 112 -- has been identified as a requirement in case law. See here. Also from MPEP 2164.08:

The Federal Circuit has repeatedly held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation'."

Does such a "full scope" requirement also apply to non-obviousness/103? The typical inquiry for obviousness is whether "the subject matter as a whole was obvious". Therefore, does this permit that some of the scope is obvious while the claim as a whole can still be deemed non-obvious? According to the following CAFC case analysis, it appears that all claim scope must be non-obvious:

According to the Court, the district court incorrectly focused on whether specific compounds containing a C1-amide group, like bimatoprost, were rendered obvious when the proper analysis should focus on whether “any compounds within the broad genus claimed by the ’029 patent, including those that did not have the C1-amide groups, were obvious at the time of the invention.”

However, I feel like I have seen broad issued claims that would seem to encompass obvious species.

  • I think this has the makings of an interesting question. However, at first blush, doesn't the Finnegan briefing answer your question? That is, a claim must be non-obvious over its full scope (otherwise the applicant would be receiving protection for obvious subject matter). Also, I'm not sure how the reference to enablement relates to the question about non-obviousness. – Maca Apr 21 '18 at 23:57
  • @Maca, the enablement reference notes the requirement of "full scope" enablement. I'm wondering if the same applies to non-obviousness; e.g. an MPEP citation of this would be helpful. – user132162 Apr 22 '18 at 20:57
  • And yes, the Finnegan article does put forward that full scope non-obviousness is required. It just seems that this is not a self-evident / widely known requirement given that the district court made the mistake, and therefore I'm wondering if it's a clear corollary from the statutes, or if the requirement rose primarily from case law. – user132162 Apr 22 '18 at 21:21
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I agree with Maca that, by definition, if any specific example that falls under the scope of a claim is obvious, the claim is obvious. Examiners do not need to find "full scope" obviousness, applicants need to have full scope non-obviousness. Some judges in district courts get a very small number of patent cases ever. Can you image a response to a 103 rejection in an office action - "yes, that example case is obvious under X and Y and does fall under the scope of the claim but that doesn't establish that the claim is obvious".

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    Yes, when you put it that way it does sound ridiculous. – user132162 Apr 24 '18 at 1:03
  • It's particularly troublesome in that, often big breakthroughs seem obvious in retrospect, if the solutions are sufficiently simple! – DukeZhou Apr 25 '18 at 16:26

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