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Non-Enabling Prior Art

Posted Wednesday, July 18, 2012 by Mike Cicero

Under 35 U.S.C. §102(b) certain occurrences may qualify as prior art against a patent application so long as they occurred prior to the so called “critical date” which is one year before the filing date of the application. These occurrences include the invention being “patented or described in a printed publication in this or a foreign country or in public use or on sale in this country.” Interestingly, under §102(b) only patents or printed publications are required to enable one of ordinary skill in the art to practice the invention in order to qualify as prior art. No such enabling requirement exists subsequent to a determination that the invention was “in public use or on sale” under §102(b).

Take for instance the case of In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994) wherein an applicant appealed a decision by the Board of Patent Appeals and Interferences (Board). Upon appeal, all of applicant’s claims stood rejected and, ultimately, the Court of Appeals for the Federal Circuit (CAFC) affirmed the board’s decision. Appellant attempted to disqualify certain pieces of prior art by arguing that they “fail to make enabling disclosures of the features for which they have been cited.” Id. at 1567. Regarding this argument the CAFC discussed the prior art in two subsections.

First, the court discussed certain abstracts published after the critical date but which evidenced that the invention was in fact “in public use or on sale” prior to the critical date. The court made explicit that the appellant’s argument that the abstracts failed to make enabling disclosures was “misdirected” because it was the software products rather than the abstracts which were the prior art. The abstract was simply evidence of the software having been in public use or on sale and, therefore, whether the abstract was enabling was completely irrelevant. Moreover, the court made explicit that after a finding that an invention was in public use or on sale prior to the critical date “there is no requirement for an enablement-type inquiry.” Id. at 1568; see also J.A. LaPorte, 787 F.2d 1577, 1583 (Fed. Cir. 1986) (“[O]ur precedent holds that the question is not whether the sale, even a third party sale, ‘discloses’ the invention at the time of the sale, but whether the sale relates to a device that embodies the invention.”). Thus, Epstein holds both that a post critical date publication may serve as evidence toward the existence of prior art from before the critical date and that a public use or sale need not be enabling in order to qualify as prior art.

Turning then to the next subsection of prior art – all of which were printed publications – the CAFC held that “these references must be enabling, thus placing the allegedly disclosed matter in the possession of the public.” Epstein, 32 F.3d at 1668. The CAFC went on to examine each printed publication to determine whether it sufficiently enabled the public, under 35 U.S.C. §112, to practice the invention.

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