Q) Anticipation

by patentbar on August 7, 2008 · 19 comments

in Exam Questions

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.

{ 19 comments… read them below or add one }

1 T.A.No Gravatar March 23, 2009 at 2:47 pm

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 § 716.07.”

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2 matt30No Gravatar May 8, 2009 at 11:36 am

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.

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3 newbeeNo Gravatar May 29, 2009 at 2:30 pm

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.

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4 PeterNo Gravatar April 9, 2010 at 3:53 pm

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).

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5 patbar70No Gravatar June 22, 2016 at 7:06 pm

Confused … geographical location (nationality – US/WTO vs anywhere) do matter for certain types of prior art (known, sale, use) in the pre-AIA 102(a) and 102(b), right? Is it that “prior art references” here refers only to patent and printed publications and not others?

Appreciate any input.

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6 SNo Gravatar May 18, 2010 at 10:52 am

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.

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7 studierNo Gravatar December 5, 2010 at 2:12 pm

Prior exam question (APRIL, 2003, Afternoon Session):

29. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following statements regarding operability or enablement of a prior art reference is the most correct?
(A) The level of disclosure required for a reference to be enabling prior art is no less if the reference is a United States patent than if it is a foreign patent.
(B) A reference is not presumed to be operable merely because it expressly anticipates or makes obvious all limitations of an applicant’s claimed apparatus.
(C) A non-enabling reference may not qualify as prior art for the purpose of determining anticipation or obviousness of the claimed invention.
(D) A reference does not provide an enabling disclosure merely by showing that the public was in possession of the claimed invention before the date of the applicant’s invention.
(E) All of the above are correct.

29. ANSWER: (A) is the most correct answer. MPEP § 2121, under the heading “What Constitutes An ‘Enabling Disclosure’ Does Not Depend On The Type Of Prior Art The Disclosure Is Contained In,” states, in reliance upon In re Moreton, 288 F.2d 708, 711, 129 USPQ 227, 230 (CCPA 1961): “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…. 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.” Answer (B) is incorrect. MPEP § 2121, under the heading “Prior Art Is Presumed To Be Operable/Enabling,” states that “[w]hen the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable.” Answer (C) is incorrect. MPEP § 2121.01, under the heading “35 U.S.C. 103 Rejections And Use Of Inoperative Prior Art,” quotes Symbol Technologies Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991) as stating that “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.” Answer (D) is incorrect. MPEP § 2121.01 states that “[a] reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the date of invention.” Answer (E) is incorrect because answers (B), (C) and (D) are incorrect.

The correctness of (C) and (D) surprised me a bit…

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8 VeNo Gravatar January 27, 2011 at 7:49 pm

Got question mentioned by studier today. Answer A

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9 GregoryNo Gravatar June 8, 2011 at 1:54 pm

got this today 6/3/2011

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10 AlfredoNo Gravatar January 24, 2012 at 12:41 pm

Had the following related question 1/23/11.
Which is false?
A. cancelled matter from a patent can be used for 102e prior art
B. cancelled matter from a patent cannot be used for 102a prior art
C. cancelled matter from a patent cannot be used for 102e prior art
D. cancelled matter from a patent can be used for 102a prior art as public knowledge.
E. C&D

This was the last question I answered so I was short on time and couldn’t find a black and white answer that D was true. But I went with E since C is true and I thought I remembered once a patent was issued, anything in the filewrapper was fair game, even if cancelled, for 102a and 102b.

Passed.

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11 TheGhostOfBilskiNo Gravatar April 6, 2012 at 5:48 pm

Agreed with maalva: Since the call of the question is “which is false”, the correct answer is A.

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12 MirandaNo Gravatar April 6, 2012 at 6:13 pm

Isn’t (b) a correct answer as well (since it is also false)? Guess the something is off with the recall of the problem.

13 maalvaNo Gravatar January 24, 2012 at 3:37 pm

Since the call of the question is which is false, I think answer here should be A.

Canceled matter in the application file of a U.S. patent >or U.S. application publication< is not a proper reference as of the filing date under 35 U.S.C. 102(e). MPEP 901.01

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14 ENo Gravatar June 9, 2013 at 10:48 am

maalva is correct, but I’m going to copy and paste ALL of MPEP 901.01 E8R9 below so that you can see why D & E are also NOT correct. Pay attention to reference of 102(e) at end of first sentence and 102(a) at the end of the last sentence below:

Canceled matter in the application file of a U.S. patent > or U.S. application publication or U.S. application publication or publication date, respectively, < in that it then constitutes prior public knowledge under 35 U.S.C. 102(a).

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15 ENo Gravatar June 9, 2013 at 10:50 am

Don’t know what happened to my full paste, so I’m going to do it again.

maalva is correct, but I’m going to copy and paste ALL of MPEP 901.01 E8R9 below so that you can see why D & E are also NOT correct. Pay attention to reference of 102(e) at end of first sentence and 102(a) at the end of the last sentence below:

Canceled matter in the application file of a U.S. patent > or U.S. application publication or U.S. application publication or publication date, respectively, < in that it then constitutes prior public knowledge under 35 U.S.C. 102(a).

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16 ENo Gravatar June 9, 2013 at 10:53 am

I don’t know what’s happening. All of MPEP 901.01 is not pasting correctly.

Just read ALL of MPEP 901.01 E8R9 (it’s short).

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17 MorelloNo Gravatar September 29, 2015 at 1:49 am

Great!

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18 MorelloNo Gravatar September 29, 2015 at 1:49 am

Great explanation!!

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19 PrepNo Gravatar July 17, 2016 at 10:23 am

Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under pre-AIA 35 U.S.C. 102(e). See Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). However, matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication date, respectively, in that it then constitutes prior public knowledge or prior public availability under pre-AIA 35 U.S.C. 102(a) or 35 U.S.C. 102(a)(1). See, e.g., In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). See also MPEP § 2127 and § 2136.02.

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