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 § 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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Topics: MPEP 2100 - Patentability, MPEP 2121 - Prior Art; General Level Of Operability Required To Make A Prima Facie Case, Patent Law, Patent Procedure
Tags: Anticipation, Enablement, patent examination