Can a 35 U.S.C. 102 rejection be made if the reference doesn’t teach how to practice the invention?
Yes, a 35 U.S.C. 102 rejection can be made even if the primary reference doesn’t explicitly teach how to practice the invention. The MPEP Section 2121.01 explains:
“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 the article disclosed or use the method disclosed.”
In such cases, secondary evidence, such as other patents or publications, can be used to show that the public possessed the knowledge to make or use the invention. This approach is further detailed in MPEP § 2131.01.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2121.01 - Use Of Prior Art In Rejections Where Operability Is In Question,
Patent Law,
Patent Procedure