Federal Circuit Affirms Patent Rejection for Lack of Enablement in In re Pen

by Dennis Crouch
The Federal Circuit (CAFC) recently affirmed a USPTO enablement rejection — holding that the patentee did not enable the “full scope” of the claimed invention.  In re Pen , 23-2282 (Fed. Cir. 2024) (non-precedential).  As an aside, the listed inventor’s legal name is “The Pen;” first and last name respectively, with no middle initial.  Based upon Pen’s address, he is related to “ The People’s Email Network .”  In the case, Pen represented himself pro se .
Pen’s patent claimed “polycyclic metallole heteroatom rich conductive long chain polymers” comprised of certain repeating units. The idea here is to create a conductive polymer for use in new battery technology.  Key limitations in the claims at issue here are that the metallole heteroatom is nitrogen, there are more than eight repeating units (n>8), and a substituent R can be any substituent.
In affirming the PTO’s refusal, the Federal Circuit found that substantial evidence supported the Board’s factual findings on the Wands factors and found no legal error in its enablement analysis.
As the Supreme Court did in Amgen , the Federal Circuit focused on the breadth of the claims compared to the teachings of the specification and the along with the state of the prior art. The court noted that the claims allow R to be any substituent and also permitted any number of repeating units n to be over 8.
The state of the prior art also weighed against enablement, as the closest prior art polymers only had n=8 repeating units. The court rejected the appellant’s argument that this reasoning was illogical because it would require the invention to already exist in the prior art. Rather, the proper analysis looks at the gap between the scope of the claims and what the prior art already enables.  That gap must be filled by the specification.
Additionally, the court found that the field of conductive metallole polymers is unpredictable, further weighing against enablement. While the appellant argued that a skilled artisan could polymerize the monomers and carry out the claimed reactions based on the specification, the court emphasized that this does not necessarily enable the full scope of n values and R substituents covered by the claims.
Regarding the amount of guidance and examples in the specification, as well as the quantity of experimentation required, the court agreed with the Board that the specification did not provide sufficient guidance to enable the full claim scope without undue experimentation. Even if the specification enables some n values and R substituents, that is inadequate when the claims have open-ended ranges tat are much broader.
Throughout its opinion, the Federal Circuit stressed the breadth of the claims compared to the more limited disclosure. “The specification must enable the full scope of the invention as defined by the claims. . . . In short, the more you claim, the more you must explain.”  Citing Amgen Inc. v. Sanofi , 143 S. Ct. 1243 (2023).
The appellant made several arguments that the Federal Circuit rejected. First, the appellant argued that the choice of R substituent does not affect the conductivity or synthesis of the polymer.  The idea here is that comprising-style claims are always extremely broad in areas of less importance, and that reality should not spoil the validity of those patents.   Instead of fully engaging, the court noted this argument was made for the first time on appeal and was therefore forfeited.
Second, the appellant challenged the Board’s reliance on references not cited by the Examiner when discussing the closest prior art. The court disagreed that this constituted a new ground of rejection, finding the Board merely further explained the Examiner’s reasoning and the underlying legal standards.
Finally, the appellant argued that the Examiner’s analysis on some of the Wands factors was conclusory and irrelevant included boilerplate language, and that the Board had improperly relied upon that analysis. While the court agreed some of the Examiner’s language was “less than exemplary,” it found no reversible error in the Board’s ultimate conclusions on the Wands factors.
This case again includes strong language surrounding the enablement requirement.  However, the case arises in the “unpredictable arts” of chemistry that appears continue to be a key feature of enablement rejections that stick.