Director Provides Insight On Interplay Between Written Description And Enablement

USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings. The petitioner challenged claims 1-27 of the '274 patent under 35 U.S.C. § 112(a) for lacking written description and enablement, and under 35 U.S.C. § 103 as obvious in view of prior art. The Board denied institution, exercising its discretion under 35 U.S.C. § 325(d).

Director Vidal vacated the PTAB's decision, emphasizing that a finding of adequate written description during examination cannot, on its own, constitute the same or substantially the same arguments under Advanced Bionics as a challenge for lack of enablement. Director Vidal noted that written description and enablement requirements involve different considerations and require separate inquiries. Furthermore, Director Vidal pointed out that the Board must provide a rationale in sufficient detail to inform the parties and the public and allow for review