The USPTO frequently rejects claims under 35 U.S.C. § 102 based on a single cited art document. Amongst the requirements that such cited art must satisfy before
qualifying as prior art is that the cited art must provide an enabling disclosure. Said another way, the cited art must demonstrate that the public was in possession
of the claimed invention before the date of the invention. MPEP § 2121.01 states that possession requires that 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. Despite this requirement, the USPTO will, from time to time,
improperly reject a claim based on cited art that does not demonstrate possession. Under such circumstances, it may be possible to successfully traverse the rejection
as illustrated by the following example.
On page [INSERT PAGE NUMBER], the Office Action rejected claims [CLAIM NUMBERS] as allegedly being anticipated under 35 U.S.C. § 102 in view of [CITED ART]. Applicants
have considered the grounds upon which this rejection rests and respectfully submit that the rejection is improper because [CITED ART] is non-enabling with respect to
the claimed subject matter.
MPEP § 2121.01 states that in order for a cited art document to anticipate a claim, the cited art must provide an enabling disclosure of the claimed subject matter.
This section of the MPEP goes on to state that the mere naming or description of the subject matter is insufficient; rather, the cited art must demonstrate that the
public was in possession of the claimed subject matter before the date of invention. In other words, the cited art must describe the claimed subject matter in such
detail as to enable one of ordinary skill in the art to make the claimed subject matter without undue experimentation.
In the present case, [CITED ART] fails to enable one of ordinary skill in the art to make the claimed subject matter without undue experimentation. For instance,
[FACT-SPECIFIC ARGUMENT—CONSIDER THE FOLLOWING:
1) HIGHLIGHT THE CLAIM FEATURES THAT THE CITED ART DOES NOT DISCLOSE;
2) DISCUSS THE SIGNIFICANCE OF SUCH FEATURES WITH RESPECT TO THE CLAIMED INVENTION; AND
3) SHOW WHY ACCOUNTING FOR SUCH FEATURES WOULD REQUIRE UNDUE EXPERIMENTATION.]
In light of the above, Applicants respectfully submit that [CITED ART] fails to provide an enabling disclosure with respect to the claimed subject matter. Said another
way, [CITED ART] does not enable one of ordinary skill in the art to make the claimed subject matter without undue experimentation. As such, Applicants respectfully
submit that the pending rejection is improper and request that the rejection be withdrawn.