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   Author  Topic: Anticipation  (Read 685 times)
RadarPat
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Anticipation
« on: Sep 11th, 2006, 5:13pm »
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Does a prior art reference have to be "enabling" in order to be anticipatory?
 
Say a claim is directed to a car having wheels, wherein the wheels are square.  A prior art reference discloses a car and says it could have "wheels that are square," but isn't enabling because it doesn't describe how to make and effectively use square wheels. In fact, it says that "a car having square wheels would be really cool, but square wheels probably difficult to make and use." Does that reference nevertheless anticipate the claim?
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Isaac
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Re: Anticipation
« Reply #1 on: Sep 11th, 2006, 5:16pm »
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on Sep 11th, 2006, 5:13pm, RadarPat wrote:
Does a prior art reference have to be "enabling" in order to be anticipatory?

 
Yes.  
 
 
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Isaac
RadarPat
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Re: Anticipation
« Reply #2 on: Sep 11th, 2006, 5:20pm »
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Uh oh, I drafted a bad question.
 
Does your "yes" refer to my first sub-question (must the reference be enabling) or my second sub-question (does the reference nevertheless anticipate)?
 
And, thanks!!
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TataBoxInhibitor
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Posts: 456
Re: Anticipation
« Reply #3 on: Sep 11th, 2006, 6:20pm »
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The first question is quoted in the response, so I think he is responding to that one in particular.
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Jonathan
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Re: Anticipation
« Reply #4 on: Sep 11th, 2006, 6:56pm »
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Relevant MPEP section:
 
2121.01 Use of Prior Art in Rejections Where Operability Is in Question [R-3] - 2100 Patentability
 
2121.01 Use of Prior Art in Rejections Where Operability Is in Question [R-3]
 
"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'... ." In re Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 196Cool. 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. Elan Pharm., Inc. v. **>Mayo Found. For Med. Educ. & Research<, 346 F.3d 1051, 1054, 68 USPQ2d 1373, 1376 (Fed. Cir. 2003) (At issue was whether a prior art reference enabled one of ordinary skill in the art to produce Elan's claimed transgenic mouse without undue experimentation. Without a disclosure enabling one skilled in the art to produce a transgenic mouse without undue experimentation, the reference would not be applicable as prior art.). A reference contains an "enabling disclosure" if the public was in possession of the claimed invention before the date of invention. "Such possession is effected if one of ordinary skill in the art could have combined the publication's description of the invention with his [or her] own knowledge to make the claimed invention." In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985).
 
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. In re Donohue, 766 F.2d at 533, 226 USPQ at 621. See MPEP 2131.01 for more information on 35 U.S.C. 102 rejections using secondary references to show that the primary reference contains an "enabling disclosure."
 
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." Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989). Therefore, "a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103." Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991).
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