What is an “enabled disclosure” in the context of 35 U.S.C. 102 rejections?
An “enabled disclosure” in the context of 35 U.S.C. 102 rejections refers to a prior art reference that not only discloses the claimed invention but also provides sufficient information to enable a person skilled in the art to make and use the invention without undue experimentation.
According to MPEP 2131.01, when a primary reference identically discloses a claimed composition or machine, an additional reference may be used to show that the primary reference has an “enabled disclosure.” This is illustrated in the case of In re Samour and In re Donohue, where the MPEP states:
“Compound claims were rejected under pre-AIA 35 U.S.C. 102(b) over a publication in view of two patents. The publication disclosed the claimed compound structure while the patents taught methods of making compounds of that general class.”
In this case, the additional references (patents) were used to demonstrate that the primary reference (publication) contained an enabled disclosure by showing that methods of making the claimed compound were known in the art.
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