Ex parte Callewaert, APPEAL 2019-005598 (Patent Tr. & App. Bd. Feb. 25, 2021).
Following an obviousness rejection, applicant relied upon an example in the specification to help prove an unexpected result (that the living cell would create certain “unnatural glycan structures”). The PTAB rejected the argument — finding that the example was written in the present tense and therefore assumed to be prophetic and therefore “does not provide the factual evidence needed to support unexpected results.” (emphasis in original). It appears in this case, the PTAB treated the prophetic example as merely an argument. 
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Ex Parte Cigan, APPEAL 2020-001230 (Patent Tr. & App. Bd. Sept. 14, 2020)
Cigan provides a minor counterpoint to Callewaert. The patent applicant argued that the prior art examples should be disregarded as merely a prophetic example. The PTAB rejected the call and instead presumed that the prior art teachings were enabling. See In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (holding that prophetic examples in the prior art are still presumed to be enabling).
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Ex Parte Harriman, APPEAL 2020-004459 (Patent Tr. & App. Bd. Feb. 10, 2021)
In Harriman, the PTAB reversed an examiner’s enablement and written description rejections, holding that the prophetic examples of an immunoglobulin light chain were sufficient. The claims are directed to a genetically modified (transgenic) chicken grows human immunoglobulin. (owned by Ligand)
Happy July 4th, all. Hope your cookouts were delicious and your fireworks will be stunning.
A decision that may be of interest for “prophetic examples?” Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984). It was argued that the spec had thousands of embodiments and that 40% of them were inoperative. The court nevertheless affirmed that du Pont, the accused infringer, had not proved lack of enablement.
A reminder of the difference between prior art enablement versus a patent’s own needed enablement – here are Fed. Cir. citations from a fairly recent Fed. Cir. case: “In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be “self-enabling,” to be relevant to the obviousness inquiry. See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“While a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.”); Beckman Instruments Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). For example, a reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled. See Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1365–66 (Fed. Cir. 2013). Alternatively, such a reference may be used to supply claim elements enabled by other prior art or evidence of record. See Comcast Cable Commc’ns Corp. v. Finisar Corp., 571 F. Supp. 2d 1137, 1145 (N.D. Cal. 2008), aff’d sub nom. Comcast Cable Commc’ns, LLC v. Finisar Corp., 319 F. App’x 916 (Fed. Cir. 2009).”
To be absolutely clear, THIS is critical:
“it is prior art for all that it teaches.”
As I have always maintained, science fiction may well contain items of non-fiction.
The fiction items though are — and remain — NOT prior art under patent law.
And in the context of a novelty attack, Paul? I see also there a point of difference.
To be effective, the reference has to enable what it discloses. But there is no need for it to enable anything beyond that one worked example or embodiment within its specification that is relied upon for its novelty-destroying effect.
By contrast, the patent claim under attack is invalid if its supporting specification fails to enable over the entire scope of the claim under attack.
Not sure that “contrast” is the correct word, as both appear to align with a targeted scope.
Sure, the targets may be different (as is to be expected, given that one is attempting to stake out a new property right, while the other is merely being invoked for a specific point), but the underlying notion of “scope” is far more similar than different.
Callewaert: Rise of the Glycans
All prior art—prophetic examples, academic journal articles, works of science fiction, etc.—is presumed enabled. That is to say, the burden rests with the patentee/applicant to establish non-enablement of the cited art. That is all a “presumption” is, a means to allocate who has the evidentiary burden.
If one hopes to prove non-obviousness based on unexpected results, however, one needs to bring—you know—actual results.
The view that science fiction is viewed as enabled is flat out incorrect.
Greg want to “preach” about credibility….
Enablement is a question of law based on underlying factual findings. In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed.Cir.2012). “[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.” Id. at 1288. When the applicant challenges enablement, however, the Board must “thoroughly revie[w]” all evidence and applicant argument to determine if the prior art reference is enabling. Id. at 1292.
In my experience, examiners will generally accept the findings set forth in an inventor/expert declaration in regards to a reference’s enablement (or lack thereof) since the vast majority of examiners don’t have actual experience in the technologies of their art units.
That is my experience as well.
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