How can an applicant challenge a prior art reference for lack of enablement?

An applicant can challenge a prior art reference for lack of enablement in two main ways, depending on the nature of the reference:

1. For references that appear enabling on their face: The applicant must submit rebuttal evidence of non-enablement. This is typically done through declarations or affidavits demonstrating that a person of ordinary skill in the art would not be able to practice the invention based on the disclosure in the reference.
2. For references that appear non-enabling on their face: As stated in MPEP 2121, “Where a reference appears to not be enabling on its face, however, an applicant may successfully challenge the cited prior art for lack of enablement by argument without supporting evidence.”

In either case, the burden is on the applicant to prove non-enablement once the examiner has made a prima facie case of anticipation or obviousness. It’s important to note that challenging enablement can be a complex process and may require expert testimony or experimental evidence in some cases.

To learn more:

• enablement
• prior art
• patent examination
• burden of proof