Atlas Powder Co. v. E.I. DuPont de Nemours & Co.
750 F.2d 1569 (Fed. Cir. 1984)

  • Atlas had a patent on a type of emulsion-based explosive that would explode even when wet.
    • Atlas' patent listed a whole bunch of salts, fuels, and emulsifiers that could be used. It gave a few examples of combinations that would work, but did not specify all the combinations would work and all the ones that wouldn't.
  • A few years later, DuPont began making their own formulation of an emulsion-based explosive. Atlas sued for infringement.
    • DuPont argued that the claims in Atlas' patent were overbroad, and that the patent didn't have enough disclosure to enable one of ordinary skill in the art to make the claimed invention. Therefore the patent was invalid.
      • Basically, DuPont argued that you'd still have to experiment with different combinations before you figured out which would work. You couldn't just follow the directions in Atlas' patent.
      • 35 U.S.C. 112 ¶1 requires that a patent contain a description that enables one skilled in the art to make and use the invention.
      • DuPont's underlying argument was that Atlas had invented a few different specific explosive compounds, so they shouldn't be allowed to claim the entire concept of emulsion-based explosives. Atlas should only get a patent on the specific compounds they developed.
  • The Trial Court found for Atlas. DuPont appealed.
    • The Trial Court found that someone skilled in the art of explosive chemistry would know which combinations would work and which wouldn't, so Atlas' description was sufficient.
  • The Appellate Court affirmed.
    • The Appellate Court noted that DuPont's chemists had little difficulty making suitable explosives from the chemicals listed in Atlas' patent.
    • The Court found that Atlas wasn't required to list every combination that would work and every combination that would not. As long as they had some 'prophetic examples' to guide people, that was enough to meet the enablement requirement.
      • There needs to be enough in the patent application to "enable the full scope of the claim."
  • Enablement is a significant restraint on claim breadth. An inventor wants to draft claims that are broad enough to stop a competitor from making a small change and getting around the patent, but on the other hand, they can't have something that is so broad that it covers variations that the inventor didn't actually develop.