Chapter §7.04 Enablement Standard for Anticipatory Prior Art

JurisdictionUnited States

§7.04 Enablement Standard for Anticipatory Prior Art

[A] General Principle

Anticipation requires the description in a single prior art reference of every element of a claimed invention.200 The quality of that description must also be considered. To be anticipatory, the prior art reference must describe the claimed invention in an enabling fashion,201 that is, with sufficient detail that a person of ordinary skill in the art could make what is described in the prior art reference without undue experimentation.202

For example, if an inventor files a patent application claiming a new chemical compound X, and a prior art reference describes merely the chemical formula of X but does not describe how to make X, the reference would not be adequate to anticipate because it is not enabling.203

Chapter 4, "The Enablement Requirement," supra, analyzed the enablement requirement as applied to the applicant's own disclosure. This requires the inventor seeking a patent in the above example to provide an enabling disclosure of how to make and use the new chemical compound X that he claims. In parallel fashion, the patent law also applies the enablement requirement to the description in a prior art reference relied on for anticipation. In other words, the enablement requirement applies to the inventor seeking a patent as well as to the prior artisan whose description is relied on to defeat patentability. In the above example, the author of the prior art reference did not provide an enabling description of X. Thus, the prior art reference does not anticipate and the claimed invention X is novel.204

Altering the facts of the above example, if the prior art reference had sufficiently described how to make X such that a skilled artisan could do so without undue experimentation, that would have been sufficient to render the reference anticipatory. There need not be evidence (in the prior art reference or elsewhere) that the prior artisan actually made X (i.e., actually reduced X to practice).205

[B] Exception for Prior Art Compounds Lacking a Utility

An important qualification on the requirement that anticipatory prior art references be enabling is the rule that a disclosure of how to use (i.e., the utility of) a prior art chemical compound is not required for anticipation.206 In other words, utility or efficacy need not be demonstrated for a reference to serve as anticipatory prior art under §102.207 Because the utility of most mechanical inventions is typically self-evident, the lack-of-utility issue generally arises only when the prior art in question is from the chemical or biotechnological arts.

Thus, extending the hypothetical above, if the inventor claiming compound X asserts in his patent application that X has utility in the treatment of cancer, but the prior art description of X says nothing about potential uses for X (in cancer or otherwise), the prior art reference is nevertheless considered anticipatory so long as it teaches X and how to make X (or the method of making X would have been obvious to a person of ordinary skill in the art208).

In this regard, the standard for enablement as applied to prior art relied on to defeat patentability by establishing anticipation is different, and less...

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