What is the “reasonable basis” standard for prior art operability in patent examinations?

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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 “reasonable basis” standard for prior art operability in patent examinations refers to the level of evidence required to establish a prima facie case of anticipation or obviousness. According to MPEP 2121 : “When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability.” This means that an examiner only needs a reasonable basis to believe that the prior art is operable. The applicant then bears the burden of proving inoperability if they wish to challenge the reference. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner's Prima Facie Anticipation Case Requires Applicant Rebuttal MPEP 2121 Same Disclosure Required for All Prior Art Types MPEP 2121 Required Operability Presumption for Anticipatory Prior Art MPEP 2121 No Discrimination Based on Nationality of Prior Art MPEP 2121 Prior Art Must Enable Invention for Anticipation MPEP 2121 Reference Must Be Proven Inoperable to Overcome Anticipation MPEP 2121 Burden to Rebut Presumed Operability of Anticipating Reference MPEP 2121 Enabling Disclosure Requirement for Anticipation MPEP 2121 Required Examiner Can Reject Claims Based on Anticipation Without Enabling Inquiry MPEP 2121 Applicant Can Argue Lack of Enablement Without Evidence MPEP 2121 Permitted Other Related FAQs 5 FAQs Collapse How can an applicant challenge a prior art reference for lack of enablement? What level of detail is required for a prior art reference to be considered enabling? What is the &#8220;enablement requirement&#8221; for prior art in paten...