Non-Enablement Responses to Prior Art Rejections

Rejections of patent applications are common. Inventors sometimes do not realize this. There are many reasons that rejections may be issued, the most frequent of which is usually some form of prior art rejection. A prior art rejection is either a rejection for lack of novelty or a rejection due to obviousness in light of prior art.

Just as there many types of rejections, there are many ways to respond to rejections. When a prior art rejection is made, one argument that can be made is that the prior art reference does not enable the invention. It must “enable one of ordinary skill in the art to make the invention without undue experimentation.” This requirement must be met for a rejection to be proper. It usually is, but sometimes, it may present potent ground to base on rejection. If a response is going to be made arguing that the prior art reference is non enabling, it is worth checking into the file history of that reference when the reference is merely a publication. It may be that the Patent Office rejected that application because it wasn’t properly enabled. Of course, the enablement standard for an application processing through the Patent Office is different than the one for a prior art reference; while a prior art reference must enable a skilled artisan to make the invention, an application must enable one to both make and use the invention. The disparity in the requirements does not mean that a rejection of the prior art rejection will necessarily provide you with a clean argument of non-enablement. But, it could, and so it is worth checking the file history.

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