Editing MPEP 2121

<noinclude>{{MPEP Section|2116|2100|2122}}</noinclude>

==[[MPEP 2121|2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case]]==

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PRIOR ART IS PRESUMED TO BE OPERABLE/ 
ENABLING

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 provide facts rebutting the presumption of 
operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 
(CCPA 1980). See also MPEP §
 
716.07.

WHAT CONSTITUTES AN “ENABLING DISCLOSURE” 
DOES NOT DEPEND ON THE 
TYPE OF PRIOR ART THE DISCLOSURE IS 
CONTAINED IN

The level of disclosure required within a reference 
to make it an “enabling disclosure” is the same no 
matter what type of prior art is at issue. It does not 
matter whether the prior art reference is a U.S. patent, 
foreign patent, a printed publication or other. There is 
no basis in the statute (35 
U.S.C. 102 or 103) for discriminating 
either in favor of or against prior art references 
on the basis of nationality. In re Moreton,
288 
F.2d 708, 129 USPQ 227 (CCPA 1961).

2121.01Use of Prior Art in Rejections 
Where Operability Is in Question 
[R-3]

“In determining that quantum of prior art disclosure 
which is necessary to declare an applicant’s invention 
‘not novel’ or ‘anticipated’ within section 102, the 
stated test is whether a reference contains an 
‘enabling disclosure’... .” In re Hoeksema, 399 F.2d 
269, 158 USPQ 596 (CCPA 1968). 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. Elan Pharm., Inc. v. 
Mayo Found. For Med. Educ. & Research, 346 
F.3d 1051, 1054, 68 USPQ2d 1373, 1376 (Fed. Cir. 
2003) (At issue was whether a prior art reference 
enabled one of ordinary skill in the art to produce 
Elan’s claimed transgenic mouse without undue 
experimentation. Without a disclosure enabling one 
skilled in the art to produce a transgenic mouse without 
undue experimentation, the reference would not 
be applicable as prior art.). A reference contains an 
“enabling disclosure” if the public was in possession 
of the claimed invention before the date of invention. 
“Such possession is effected if one of ordinary skill in 
the art could have combined the publication’s description 
of the invention with his [or her] own knowledge 
to make the claimed invention.” In re Donohue, 766 
F.2d 531, 226 USPQ 619 (Fed. Cir. 1985).

I.35 U.S.C. 102 REJECTIONS AND ADDITION 
OF EVIDENCE SHOWING REFERENCE 
IS OPERABLE

It is possible to make a 35 U.S.C. 102 rejection 
even if the reference does not itself teach one of ordinary 
skill how to practice the invention, i.e., how 
to 
make or use the article disclosed. If the reference 
teaches every claimed element of the article, secondary 
evidence, such as other patents or publications, 
can be cited to show public possession of the method 
of making and/or using. In re Donohue, 766 F.2d at 
533, 226 USPQ at 621. See MPEP § 2131.01 for more 
information on 35 U.S.C. 102 rejections using secondary 
references to show that the primary reference 
contains an “enabling disclosure.” 

II.35 U.S.C. 103 REJECTIONS AND USE OF 
INOPERATIVE PRIOR ART

“Even if a reference discloses an inoperative 
device, it is prior art for all that it teaches.” Beckman 
Instruments v. LKB Produkter AB, 892 F.2d 1547, 
1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989). 
Therefore, “a non-enabling reference may qualify as 
prior art for the purpose of determining obviousness 
under 35 U.S.C. 103.” Symbol Techs. Inc. v. Opticon 
Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 
(Fed. Cir. 1991).

2121.02Compounds and Compositions 
— What Constitutes Enabling 
Prior Art [R-3]

I. ONE OF ORDINARY SKILL IN THE 
ART MUST BE ABLE TO MAKE OR 
SYNTHESIZE

Where a process for making the compound is not 
developed until after the date of invention, the mere 
naming of a compound in a reference, without more, 
cannot constitute a description of the compound. In re 
Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 
1968). Note, however, that a reference is presumed 
operable until applicant provides facts rebutting the 
presumption of operability. In re Sasse, 629 F.2d 
675, 207 USPQ 107 (CCPA 1980). Therefore, applicant 
must provide evidence showing that a process for 
making was not known at the time of the invention. 
See the following paragraph for the evidentiary standard 
to be applied. 

II. A REFERENCE DOES NOT CONTAIN 
AN “ENABLING DISCLOSURE” IF ATTEMPTS 
AT MAKING THE COMPOUND 
OR COMPOSITION WERE UNSUCCESSFUL 
BEFORE THE DATE OF INVENTION

When a prior art reference merely discloses the 
structure of the claimed compound, evidence showing 
that attempts to prepare that compound were unsuccessful 
before the date of invention will be adequate 
to show inoperability. In re Wiggins, 488 F.2d 538, 
179 USPQ 421 (CCPA 1971). However, the fact that 
an author of a publication did not attempt to make the 
compound disclosed, without more, will not overcome 
a rejection based on that publication. In re 
Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 
1985) (In this case, the examiner had made a rejection 
under 35 U.S.C. 102(b) over a publication, which disclosed 
the claimed compound, in combination with 
two patents teaching a general process of making the 
particular class of compounds. The applicant submitted 
an affidavit stating that the authors of the publication 
had not actually synthesized the compound. The 
court held that the fact that the publication’s author 
did not synthesize the disclosed compound was 
immaterial to the question of reference operability. 
The patents were evidence that synthesis methods 
were well known. The court distinguished Wiggins, in 
which a very similar rejection was reversed. In Wiggins, 
attempts to make the compounds using the prior 
art methods were all unsuccessful.). Compare In re 
Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 
1968) (A claim to a compound was rejected over a 
patent to De Boer which disclosed compounds similar 
in structure to those claimed (obvious homologs) and 
a process of making these compounds. Applicant 
responded with an affidavit by an expert named Wiley 
which stated that there was no indication in the De 
Boer patent that the process disclosed in De Boercould be used to produce the claimed compound and 
that he did not believe that the process disclosed in De 
Boer could be adapted to the production of the 
claimed compound. The court held that the facts 
stated in this affidavit were legally sufficient to over
come the rejection and that applicant need not show 
that all known processes are incapable of producing 
the claimed compound for this showing would be 
practically impossible.). 

===2121.03 Plant Genetics — What Constitutes Enabling Prior Art===

THOSE OF ORDINARY SKILL MUST BE ABLE 
TO GROW AND CULTIVATE THE PLANT

When the claims are drawn to plants, the reference, 
combined with knowledge in the prior art, must 
enable one of ordinary skill in the art to reproduce the 
plant. In re LeGrice, 301 F.2d 929, 133 USPQ 365 
(CCPA 1962) (National Rose Society Annual of 
England and various other catalogues showed color 
pictures of the claimed roses and disclosed that applicant 
had raised the roses. The publications were published 
more than 1 year before applicant's filing date. 
The court held that the publications did not place the 
rose in the public domain. Information on the grafting 
process required to reproduce the rose was not 
included in the publications and such information was 
necessary for those of ordinary skill in the art (plant 
breeders) to reproduce the rose.). Compare Ex parteThomson, 24 USPQ2d 1618 (Bd. Pat. App. & Inter. 
1992) (Seeds were commercially available more than 
1 year prior to applicant’s filing date. One of ordinary 
skill in the art could grow the claimed cotton cultivar 
from the commercially available seeds. Thus, the publications 
describing the cotton cultivar had “enabled 
disclosures.” The Board distinguished In re LeGriceby finding that the catalogue picture of the rose of In 
re LeGrice was the only evidence in that case. There 
was no evidence of commercial availability in 
enabling form since the asexually reproduced rose 
could not be reproduced from seed. Therefore, the 
public would not have possession of the rose by its 
picture alone, but the public would have possession of 
the cotton cultivar based on the publications and the 
availability of the seeds.).

In In re Elsner, 381 F.3d 1125, 1126, 72 USPQ2d 
1038, 1040 (Fed. Cir. 2004), prior to the critical date 
of a plant patent application, the plant had been sold 
in Germany and a foreign Plant Breeder’s Rights 
(PBR) application for the same plant had been published 
in the Community Plant Variety Office Official 
Gazette. The court held that when (i) a publication 
identifies claimed the plant, (ii) a foreign sale occurs 
that puts one of ordinary skill in the art in possession 
of the plant itself, and (iii) such possession permits 
asexual reproduction of the plant without undue 
experimentation to one of ordinary skill in the art, 
then that combination of facts and events directly conveys 
the essential knowledge of the invention and 
constitutes a 35 U.S.C. 102(b) statutory bar. 381 F.3d 
at 1129, 72 USPQ2d at 1041. Although the court 
agreed with the Board that foreign sales may enable 
an otherwise non-enabling printed publication, the 
case was remanded for additional fact-finding in order 
to determine if the foreign sales of the plant were 
known to be accessible to the skilled artisan and if the 
skilled artisan could have reproduced the plant asexually 
after obtaining it without undue experimentation. 
381 F.3d at 1131, 72 USPQ2d at 1043.

===2121.04Apparatus and Articles — What Constitutes Enabling Prior Art===

PICTURES MAY CONSTITUTE AN “ENA-
BLING DISCLOSURE”

Pictures and drawings may be sufficiently enabling 
to put the public in the possession of the article pictured. 
Therefore, such an enabling picture may 
be 
used to reject claims to the article. However, the 
picture must show all the claimed structural features 
and how they are put together. Jockmus v. Leviton, 28 
F.2d 812 (2d Cir. 1928). See also MPEP § 2125 for a 
discussion of drawings as prior art.