How do prophetic examples affect the enablement of a patent disclosure?

Prophetic examples, which are conceived but not yet made embodiments, do not necessarily make a patent disclosure nonenabling. The MPEP 2164.08(b) cites the Atlas Powder case, stating:

“Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984) (prophetic examples do not make the disclosure nonenabling).”

This means that including prophetic examples in a patent application does not automatically render the disclosure nonenabling. The key consideration is whether a skilled person could determine which of these prophetic examples would be operative without undue experimentation.

To learn more:

• Prophetic examples
• Enablement
• Patent disclosure
• Undue experimentation