TAKEAWAY: When drafting patent applications, practitioners should take into consideration the enablement requirement, particularly for technologies with greater unpredictability.
When filing a patent application, an applicant is required to satisfy several requirements pertaining to the specification, including written description and enablement (35 U.S.C. § 112(a)).
Examination guidance for enablement applies a test that asks whether experimentation needed to practice the invention is undue or unreasonable. (M.P.E.P. § 2164.01). The Federal Circuit has provided various factors for assessing compliance with the enablement requirement, which are commonly referred to as the “Wands Factors.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400 (Fed. Cir. 1988). These factors include: (a) the breadth of the claims; (b) The nature of the invention; (c) The state of the prior art; (d) The level of one of ordinary skill; (e) The level of predictability in the art; (f) The amount of direction provided by the inventor; (g) The existence of working examples; and (h) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
With respect to the last Wands factor, the amount of experimentation deemed reasonable depends on the nature of the technology and information available to one of ordinary skill in the art. The level of experimentation permitted for established technologies is often different from that for less predictable, emerging technologies.
USPTO appellate decisions also lend insight on the enablement requirement. For example, in a recent decision in U.S. Application No. 17/321,012 (May 6, 2025), the Patent Trial and Appeal Board (PTAB) overturned an enablement rejection regarding sensors used to determine fill levels in a container. The Examiner had argued that one would not have known which sensors to use to practice the claims. In reaching its decision that the enablement requirement was satisfied, the PTAB referenced a Declaration filed by the Applicant as evidence of the types of sensors known at the time the application was filed, and one’s ability to select and use appropriate sensors based on the guidance in the specification.
When drafting an application, Applicants should keep the enablement requirement in mind and consider the level of information necessary to practice an invention.