MPEP Section 2121, Prior Art; General Level of Operability Required to Make a
This document contains one section of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Fifth Revision (August 2006). This page was last updated in July 2007. You may return to the section index to find a particular section. Alternatively, you may search the MPEP use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the MPEP in the pop-up list.
2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case [R-6]
>I. < 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.
>II. < 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).
>III. EFFICACY IS NOT A REQUIREMENT FOR PRIOR ART ENABLEMENT
A prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention; "proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation." Impax Labs. Inc. v. Aventis Pharm.Inc., 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006). See also MPEP § 2122.<