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An anticipating reference must be enabled February 28, 2012

Posted by Brian Schar in Federal Circuit, Patent prosecution.

Clearvalue, Inc. v. Pearl River Polymers, Inc., a recent precedential decision from the Federal Circuit, emphasized that a 102 reference must be enabled to be a proper reference.  This is not new law, but Judge Moore stated it clearly: “To anticipate a patent claim under 35 U.S.C. §102, ‘a reference must describe…each and every claim limitation and enable one of skill in the art to practive an embodiment of the claimed invention without undue experimentation.’  Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).”

Given that there are significantly fewer avenues for challenging a rejection under 102 as compared to a rejection under 103, a key part of any response to a 102 rejection must include an evaluation of the allegedly-anticipating reference to determine whether that reference is enabled as to the claim limitations in question.


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