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

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.