What is the difference between using prior art for 35 U.S.C. 102 and 35 U.S.C. 103 rejections?

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 use of prior art differs for 35 U.S.C. 102 (anticipation) and 35 U.S.C. 103 (obviousness) rejections. For 35 U.S.C. 102 rejections, the MPEP Section 2121.01 indicates that the reference must contain an enabling disclosure:

“The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or description of the subject matter is insufficient, if it cannot be produced without undue experimentation.”

However, for 35 U.S.C. 103 rejections, the requirements are less stringent. The MPEP states:

“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”

This means that for obviousness rejections, even non-enabling or inoperative prior art can be used, as long as it teaches relevant aspects of the claimed invention.