How to Attack Non-Enabling Prior Art References

Written by Mark Terry    

As a full time patent prosecution attorney, I review 35 U.S.C. § 102 and 35 U.S.C. § 103 rejections on a daily basis. It is quite common in certain arts, such as the medical device arts, that the Office Action will cite non-patent literature as a prior art reference. Often, this non-patent literature is found by doing a keyword search using a web search mechanism, such as Google. The problem with non-patent literature found in this manner is that it is not always enabled. In fact, I have found that a good portion of the time, the non-patent literature found in this manner is not enabled. This presents a good opportunity to attack a prior art reference in an Office Action based on non-enablement.

Recall that a prior art reference provides an enabling disclosure of a claimed invention if its disclose the claimed invention in such a way, or in sufficient detail, such that a person of ordinary skill in the art can carry out the claimed invention without undue experimentation. If the prior art reference does not meet these enablement requirements, then the prior art reference cannot be used in a 35 U.S.C. § 102 or 35 U.S.C. § 103 rejection. And the requirement that a person of ordinary skill in the art can carry out the claimed invention (after reading the prior reference) goes further than that. In order to be enabling, the prior art reference must provide an indication of what the disclosed system is used for, why the system was conceived, how the system can be used, how one would build the system, who might use the system and the purpose of the system. All of the aforementioned information is necessary for a person of ordinary skill in the art to carry out the invention. After all, how can a person of ordinary skill in the art to carry out the invention if the prior art reference does not explain why the system was conceived, or how the system can be used?

    Lessons Learned: When attacking an Examiner’s 35 U.S.C. §103 obviousness rejection, or 35 U.S.C. §102 anticipation rejection, the savvy patent practitioner should review the cited prior art references to make sure they are enabled. The practitioner should review the prior art references to make sure that a person of ordinary skill in the art can carry out the invention after reading the prior art references. If the practitioner believes a person of ordinary skill in the art cannot carry out the invention, then the practitioner should provide attorney argument outlining why the invention cannot be carried out after reading the prior art references. A successful non-enablement response can result in a reversal of the rejection at the Patent Trial and Appeal Board (PTAB). Below I provide a sample response to a 35 U.S.C. § 103 rejection where we attack a prior art reference (called the “A reference”) based on non-enablement.

Sample Response to Office Action Using the Non-Enabling Argument

   The 35 U.S.C. § 103 rejection must fail because the prior art reference is not “enabling” prior art. It is axiomatic that prior art must possess a general level of operability to be used in establishing a prima facie case of obviousness. “In determining that quantum of prior art disclosure which is necessary to declare an applicant’s invention ‘not novel’ or ‘anticipated’ within section102, the stated test is whether a reference contains an ‘enabling disclosure’ …. ” In re Hoeksema, 399F.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). (Emphasis added.) See also MPEP §2121.01.

    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. MPEP §2121 III. (Emphasis added.)

    The A reference is a Power Point presentation that, it appears, was presented in front of an audience. The presentation, however, explains very little about the system that is being presented, namely, what the system is used for, why it is being presented and how it can be used. A good example of this is shown in the first 5 pages of the 67 page presentation, which are described below.

    Page 1 states only “GENERAL INFORMATION’S – Share Like – Follow – Published on Mar. 15, 2010” in addition to some graphics. Page 2 states only “1144 views” in addition to some graphics. Page 3 states only “GENERAL INFORMATION” in addition to some graphics. Page 4 states only “THE SYSTEM Computing” in addition to some graphics. Page 5 states only “Reference: Task Force of the Society of Computing (1996)”.

    The above review of the first 5 pages of the 67 page A reference illustrates the Applicant’s point. The first 5 pages, as an example, when viewed alone, do not provide the reader any indication of what the system is used for, why the system is being presented and how it can be used. The first 5 pages, when viewed alone, do not provide the reader any indication of how one would build the system being described, who might use the system being presented and the purpose of the system. How can a person of ordinary skill in the art (POSITA) carry out the claimed invention (as required by MPEP §2121 III), when the reader cannot determine from the reference what the system is used for? How can a POSITA carry out the claimed invention when the reader cannot determine from the reference why the system is being presented, how the system can be used, how one would build the system, who might use the system and the purpose of the system? This is because the A reference does not, in fact, provide any cognizable or coherent description in writing about what the system is used for, why the system is being presented, how the system can be used, how one would build the system, who might use the system or the purpose of the system.

    At best, the A reference describes generally some ideas that involve computing, computing devices, and the computing field. This is not the same as the Applicant’s sophisticated mathematical calculations in Applicant’s claim 1. The Patent Office must be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int ‘l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). It appears that the Patent Office is reading more into the A reference than is actually there, which is an indication that distortion caused by hindsight bias has been allowed to invade the examination process.

    The rejection of the claims 1-10 under 35 U.S.C. §103(a) over the A reference in view of other cited references must fail because the A reference is not sufficiently “enabling” to qualify as prior art. Mark Terry is a Board-Certified Specialist in the area of Intellectual Property Law and operates a patent and trademark practice in the City of Miami. Contact Mark Terry if you have any questions regarding enforcement of patents, trademarks and copyrights.

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