What role does the state of the prior art play in enablement?
The state of the prior art is a critical factor in determining enablement. MPEP 2164.05(a) defines it as “what one skilled in the art would have known, at the time the application was filed, about the subject matter to which the claimed invention pertains.”
The MPEP further explains: “The state of the prior art provides evidence for the degree of predictability in the art and is related to the amount of direction or guidance needed in the specification as filed to meet the enablement requirement. The state of the prior art is also related to the need for working examples in the specification.“
This means that the existing knowledge in the field at the time of filing helps determine how much detail and guidance the specification needs to provide to be enabling. If the prior art shows high predictability in the field, less guidance may be needed in the specification. Conversely, if the field is unpredictable, more detailed instructions and examples may be required to meet the enablement standard.
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