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Intellectual property assets may be difficult to identify, effectively protect, and leverage. LeonardPatel PC specializes in strategy, procurement, and enforcement for comprehensive intellectual property protection.

Non-Enabling Art

Overview

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.

Example Argument

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
(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.

Established Corporations

LeonardPatel works closely with corporate counsel to develop and adhere to an effective patent portfolio management strategy and to deliver high quality intellectual property services at reasonable and predictable fees. We offer a full suite of intellectual property services to assist corporate counsel with the many issues that may arise in the context of a large intellectual property portfolio.

Government Organizations

LeonardPatel assists government technology organizations such as NASA with evaluating and protecting promising technologies. We have a deep understanding of the process of protecting government intellectual property assets. We have a CAGE code, a DUNS number, and we are qualified as a SBA small business, as is often preferred for government contractors.

Startups And Individual Inventors

LeonardPatel offers end-to-end intellectual property services to startups and individual inventors, including evaluating the business case to determine whether intellectual property protection makes sense, procuring intellectual property protection, and, if desired, assisting with valuing and licensing the technology. We also attempt to connect startups with venture capital sources, where possible.