How does the USPTO determine if a prior art reference is enabling for a claimed compound?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. The USPTO determines if a prior art reference is enabling for a claimed compound by considering several factors: The level of specificity in the prior art’s disclosure of the compound The presence of working examples or detailed synthetic procedures The predictability of the art The knowledge of a person of ordinary skill in the art at the time of the invention As stated in MPEP 2121.02 : “ In chemical arts, the disclosure of a single species usually does not provide an adequate basis to support generic claims. ” However, if the art is highly predictable and the compound is readily obtainable, a single species may be sufficient to enable a genus. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Same Disclosure Required for All Prior Art Types MPEP 2121 Required Prior Art Must Enable Invention for Anticipation MPEP 2121 Enabling Disclosure Requirement for Anticipation MPEP 2121 Required No Discrimination Based on Nationality of Prior Art MPEP 2121 Operability Presumption for Anticipatory Prior Art MPEP 2121 Author Did Not Synthesize Compound Is Irrelevant to Reference Operability MPEP 2121.02 Examiner Can Reject Claims Based on Anticipation Without Enabling Inquiry MPEP 2121 Applicant Can Argue Lack of Enablement Without Evidence MPEP 2121 Permitted Evidence of Inoperable Compound MPEP 2121.02 Evidence of Unsuccessful Attempts to Make Compound Overcomes Rejection MPEP 2121.02 Other Related FAQs 5 FAQs Collapse How does the AIA affect the relevant time for determining enabling prior art? What is the significance of &#8220;analogous art&#8221; in determining enablement for chemical compounds? Does an author&#8217;s failure to synthesize a compound invalidate it as p...