Another question on the exam: whether there is a different standard for patents vs. publication when it comes to showing enablement for anticipation purposes. (i.e. a prior art reference has to be enabling). I though that US patents were presumed enabling, but I read in the MPEP that for prior art purposes all art requires the same showing of enablement.
Q) Anticipation
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{ 5 comments… read them below or add one }
Prior art is generally considered enabling.
See 2121: “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. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). See also MPEP ยง 716.07.”
Sure, in order an application to be granted as a patent, it has to have an enabling disclosure. it has to enable whatever it is claiming, however it does not necessarily provide enabling disclosure for an invention it just mentions in the spec but does not claim. If you invention appears in the spec of a prior art you may possibly overcome it showing that it is not enabling.
Matt30, If you show that your invn appearing in the spec of prior art is nonenabling, won’t you be admitting that ur invn is nonenabling too? maybe I am missing something in what you wrote- please explain.
The answer is clearly given in MPEP 2121:
Look at the NEXT paragraph, not stated above by T.A.
2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case [R-6]
>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 ( 35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality. In re Moreton, 288 F.2d 708, 129 USPQ 227 (CCPA 1961).
I agree with Peter.
2121 II. What constitutes an “enabling disclosure” does not depend on the type of prior art the disclosure is contained in
This is more relevant.