How does the USPTO treat prior art references that are not fully enabling?

How does the USPTO treat prior art references that are not fully enabling?

The USPTO treats prior art references that are not fully enabling as potentially valid prior art, depending on the context. According to MPEP 2121:

“A reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or before the date of invention for applications or patents subject to pre-AIA law.”

However, the MPEP also states that “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” This means that:

  • A reference doesn’t need to be fully enabling to be considered prior art.
  • Non-enabling references can still be used for obviousness determinations under 35 U.S.C. 103.
  • The reference should provide enough information for a person of ordinary skill in the art to make the invention work within a reasonable amount of time.

Examiners will consider the overall teachings of the reference, even if it’s not fully enabling, when assessing patentability.

To learn more:

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