Academic journal article Harvard Journal of Law & Technology

A Knot in the Eternal Golden Braid: Searching for Coherence in the Relationship between Enablement, Anticipation, and Obviousness

Academic journal article Harvard Journal of Law & Technology

A Knot in the Eternal Golden Braid: Searching for Coherence in the Relationship between Enablement, Anticipation, and Obviousness

Article excerpt

TABLE OF CONTENTS

  I. Introduction
 II. Doctrinal Framework
     A. Anticipation and Enablement
     B. Anticipation and Obviousness
     C. Obviousness and Enablement
III. Introducing the Knot: KSR and Its Progeny
     A. KSR's Impact on Obviousness
     B. Resulting Asymmetry
 IV. How Should the Federal Circuit Respond?
     A. Lower the Enablement Standard
     B. Embrace "Enablement" as Empty Signifier
  V. Conclusion

I. Introduction

The Supreme Court, the Court of Customs and Patent Appeals ("CCPA"), and later the Federal Circuit have worked in concert to construct a doctrinal framework in which enablement, anticipation, and obviousness are all closely interrelated. Building upon scarce statutory support, the courts have grafted an enablement requirement into the obviousness and anticipation inquiries, thus blending these otherwise distinct doctrines. Enablement is required for patentability under [sections] 112, for anticipation under [sections] 102, and for obviousness under [sections] 103. Each of these doctrines invokes the same analysis with different reference points. Enablement for patentability requires that the specification enable a person having ordinary skill in the art (a "PHOSITA") (1) to "make and use" the invention. (2) For anticipation, a single prior art reference must enable the invention. And for obviousness, the combination of prior art references, taken as a whole, must enable the claimed invention. The persistent intertwining of these three doctrines led Professor Donald Chisum to analogize the enablement, anticipation, and obviousness standards to "three strands of an intricately braided cord." (3)

This symmetry, once at least tacitly recognized in Federal Circuit jurisprudence, has been disturbed by more recent developments. Following the Supreme Court's decision in KSR International Co. v. Teleflex Inc., (4) the Federal Circuit has effectively raised the bar for nonobviousness determinations. However, despite the closely intertwined connections, the Federal Circuit has not adequately considered the implications for the doctrine of enablement. The resulting standards appear inconsistent: a combination of marginally relevant prior art references may enable the claimed invention for an obviousness determination, yet nearly every detail must be discussed in the specification to enable the claimed invention for patentability purposes.

This Note will begin in Part II with an analysis of the classical doctrinal framework developed by the courts. A brief review of this regime reveals the deep interconnections between enablement, anticipation, and obviousness. Although the statutory language does not clearly mandate the doctrinal superstructure erected by the courts, the general approach has not been seriously disturbed until recently. In Part III, this Note argues that in response to the Supreme Court's decision in KSR, (5) the Federal Circuit has modified its [sections] 103 jurisprudence by effectively raising the bar for nonobviousness determinations. In so doing, however, the court has failed to appreciate the full doctrinal implications that such an adjustment might have. The result threatens the conceptual coherence of enablement. By raising the bar for nonobviousness without also correspondingly lowering the standard for enablement, the Federal Circuit has struck a subtle blow to the doctrinal coherence of patent law, what Professor Chisum called the "Eternal Golden Braid." (6)

In Part IV, this Note provides a modest suggestion for how the Federal Circuit might deal with this problem, laying out two options. Either the court must amend its enablement jurisprudence, or it--and the patent bar more broadly--must abandon any lofty notion of doctrinal coherence or deep connection between enablement, anticipation, and obviousness. Lowering the bar for enablement would increase the number of issued patents while simultaneously decreasing the quality of patent disclosure; the Federal Circuit's best choice is therefore to abandon hopes of an elegant doctrinal framework. …

Search by... Author
Show... All Results Primary Sources Peer-reviewed

Oops!

An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.