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

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 rebut the presumption of

operability.

In re Sasse,

629 F.2d 675, 207 USPQ 107 (CCPA 1980). See

also

MPEP

§ 716.07

. See also

In re Antor Media Corp.,

689 F.3d 1282, 103 USPQ2d 1555 (Fed. Cir. 2012). Specifically, in

In re Antor

Media Corp.,

the court stated:

“Consistent with the statutory framework and our

precedent, we therefore hold that, during patent prosecution, an examiner is

entitled to reject claims as anticipated by a prior art publication or patent

without conducting an inquiry into whether or not that prior art reference is

enabling. As long as an examiner makes a proper prima facie case of anticipation

by giving adequate notice under

§ 132

, the burden shifts to

the applicant to submit rebuttal evidence of nonenablement.”

In re Antor Media Corp.,

689 F.3d at

1289, 103 USPQ2d at 1559.

Where a reference appears to not be enabling on its

face, however, an applicant may successfully challenge the cited prior art for lack of

enablement by argument without supporting evidence.

In re Morsa,

713

F.3d 104, 110, 106 USPQ2d 1327, 1332 (Fed. Cir. 2013).

See also

MPEP § 716.07

.

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).

III

sclosure” 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).

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.”

Impax Labs. Inc. v. Aventis

Pharm.

Inc.,

468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006)

(citing

Rasmusson v. SmithKline Beecham Corp.,

413 F.3d 1318, 1326,

75 USPQ2d 1297, 1302 (Fed. Cir. 2005)). See also

MPEP § 2122

.