2120 Prior Art‎ > ‎

2121

2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case [R-6]

 

>I.    < PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING

GRAVES

LEGRICE

A reference anticipates a claim if it discloses the claimed invention “such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)).

See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (citing In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))
(confirming the longstanding interpretation that the teachings of a reference may be taken in combination with knowledge of the skilled artisan to put the artisan in possession of the claimed invention even though the patent does not specifically disclose certain features.).

SASSE

In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed disclosures) in that patent that are at issue. In re Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A.1980) (“[W]hen the PTO cited a disclosure which expressly anticipated the present invention . . . the burden was shifted to the applicant. He had to rebut the presumption of the operability of [the prior art patent] by a preponderance of the evidence.”). The applicant, however, can then overcome that rejection by proving that the relevant disclosures of the prior art patent are not enabled. Id. 

>II.    < WHAT CONSTITUTES AN "ENABLING DISCLOSURE" DOES NOT DEPEND ON THE TYPE OF PRIOR ART THE DISCLOSURE IS CONTAINED IN

>III.    EFFICACY IS NOT A REQUIREMENT FOR PRIOR ART ENABLEMENT

2121.01 Use of Prior Art in Rejections Where Operability Is in Question [R-3]

ELAN

A reference that is not enabled may not act as anticipatory prior art. Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir 2003). 

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

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

BECKMAN

SYMBOL TECHS

In particular, "a non-enabling reference may qualify as prior art for the purposed of determining obviousness under § 103." Symbol Techs. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). In this regard, "[e]ven if a reference discloses an inoperative device, it is prior art for all that it teaches." Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.Cir.1989).

However, “[e]ven if a reference discloses an inoperative device, it is prior art for all that it teaches.” Beckman Instruments, Inc. v. LKB Produckter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). "While a reference must enable someone to practice the invention in order to anticipate under §102(b), a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103." Symbol Tech. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).


Comments