IN RE MORSA (Fed. Cir. 2015) (P) – High level of ordinary skill asserted in the specification may lower the bar for enablement of the prior art

by Steve Driskill | Oct 19, 2015 | [sub] enabling disclosure, Anticipation, Prior Art

Statements in the specification asserting a high level of skill in the art may be used to lower the bar for enablement of the prior art as well as the application itself. Here, for example, even high-level descriptions in a prior art press release about “us[ing] the...

IN RE STEVE MORSA (Fed. Cir. 2013) (P) – Prior art enablement burden of proof

by Steve Driskill | Apr 5, 2013 | [sub] enabling disclosure, Prior Art

An applicant is not required to submit affidavits or declarations to challenge the enablement of prior art references. Any non-frivolous argument that cited prior art is not enabling must be addressed by the PTO. Background / Facts: The application on appeal from the...

THE FOX GROUP, INC. v. CREE, INC. (Fed. Cir. 2012) (P) – Enablement of prior inventions under 35 U.S.C. § 102(g)

by Steve Driskill | Nov 28, 2012 | [sub] enabling disclosure, Prior Art

Public demonstration of possession of a prior invention under 35 U.S.C. § 102(g) is sufficient to demonstrate that the prior inventors did not abandon, suppress, or conceal their invention. Enabling others to reproduce the invention is not required. Background /...

IN RE ANTOR MEDIA CORP. (Fed. Cir. 2012) (P) – Enablement of prior art for anticipation

by Steve Driskill | Jul 27, 2012 | [sub] enabling disclosure, Prior Art

Patents, patent publications, and even non-patent printed publications are presumptively enabling for anticipation purposes, for all claimed as well as unclaimed subject matter. To make a successful showing of non-enablement and shift the burden back to the PTO to...