Can an examiner reject claims based on a non-enabling prior art reference?
Yes, an examiner can reject claims based on a prior art reference without first determining if the reference is enabling. This practice was affirmed in the case of In re Antor Media Corp., as cited in MPEP 2121:
“[D]uring 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 ยง 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”
This ruling emphasizes that the initial burden is on the applicant to prove non-enablement of a cited prior art reference, not on the examiner to prove enablement.
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