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2121    Prior Art; General Level of Operability Required to Make a Prima Facie Case

MPEP SECTION SUMMARY This section covers the general level of operability required to make a prima facie case. It covers the idea that prior art is presumed to be operable/enabling and that what constitutes an enabling disclosure does not depend on the type of prior art the disclosure is contained in. Essentially, the level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue. The last point made by this section is that efficacy is not a requirement for prior art enablement.

  Section Frequency Chart

I.    PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING

When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable.

• Once such a reference is found, the burden is on applicant to provide facts rebutting the presumption of operability.

II.    WHAT CONSTITUTES AN “ENABLING DISCLOSURE” DOES NOT DEPEND ON THE TYPE OF PRIOR ART THE DISCLOSURE IS CONTAINED IN

The level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue.

• It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other.
• There is no basis in the statute for discriminating either in favor of or against prior art references on the basis of nationality.

III.   EFFICACY IS NOT A REQUIREMENT FOR PRIOR ART ENABLEMENT

A prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention; "proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation."

MPEP SECTION SUMMARY This section briefly covers the use of prior art in rejections where operability is in question. It is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e., how to make or use the article disclosed. In addition, this section states that even if a reference discloses an inoperative device, it is prior art for all that it teaches.

  Section Frequency Chart

“In determining that quantum of prior art disclosure which is necessary to declare an applicant’s invention ‘not novel’ or ‘anticipated’ within section 102, the stated test is whether a reference contains an ‘enabling disclosure’... .”

• The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or description of the subject matter is insufficient, if it cannot be produced without undue experimentation.

I.   35 U.S.C. 102 REJECTIONS AND ADDITION OF EVIDENCE SHOWING REFERENCE IS OPERABLE

It is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e., how to make or use the article disclosed.

• If the reference teaches every claimed element of the article, secondary evidence, such as other patents or publications, can be cited to show public possession of the method of making and/or using.

II.   35 U.S.C. 103 REJECTIONS AND USE OF INOPERATIVE PRIOR ART

“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”

• Therefore, “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.”
  
  

MPEP SECTION SUMMARY This section covers what constitutes enabling prior art when dealing with compounds and compositions. One of ordinary skill in the art must be able to make or synthesize the compound. In addition, a reference does not contain an enabling disclosure if attempts at making the compound or composition were unsuccessful before the date of the invention.

I.    ONE OF ORDINARY SKILL IN THE ART MUST BE ABLE TO MAKE OR SYNTHESIZE

Where a process for making the compound is not developed until after the date of invention, the mere naming of a compound in a reference, without more, cannot constitute a description of the compound.

• Note, however, that a reference is presumed operable until applicant provides facts rebutting the presumption of operability.
• Therefore, applicant must provide evidence showing that a process for making was not known at the time of the invention.

II.    A REFERENCE DOES NOT CONTAIN AN “ENABLING DISCLOSURE” IF ATTEMPTS AT MAKING THE COMPOUND OR COMPOSITION WERE UNSUCCESSFUL BEFORE THE DATE OF INVENTION

When a prior art reference merely discloses the structure of the claimed compound, evidence showing that attempts to prepare that compound were unsuccessful before the date of invention will be adequate to show inoperability.

• However, the fact that an author of a publication did not attempt to make the compound disclosed, without more, will not overcome a rejection based on that publication.
  
  

MPEP SECTION SUMMARY This section covers what constitutes enabling prior art when dealing with plant genetics. When the claims are drawn to plants, the reference, combined with knowledge in the prior art, must enable one of ordinary skill in the art to reproduce the plant.

MPEP SECTION SUMMARY This section covers what constitutes enabling prior art when dealing with apparatus and articles. Pictures and drawings may be sufficiently enabling to put the public in the possession of the article pictured. Therefore, such an enabling picture may be used to reject claims to the article. However, the picture must show all the claimed structural features and how they are put together.

» 2122  Discussion of Utility in the Prior Art