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2121.03 MANUAL OF PATENT EXAMINING PROCEDURE
2121.03 Plant Genetics - What
Constitutes'Enabling Prior Art
THOSE OF ORDINARY SKILL MUST BE
ABLE TO GROW AND CULTIVATE THE
PLANT
When the claims are drawn to plants, the reference,
combined with knowledge in the prior art.i.must
enable one of ordinary skill in the art to reproduce the
plant. In reLeGrice, 301 F.2d 929, 133 USPQ 365
(CCPA 1962) (National Rose Society Annual of
England and varions other catalogues showed color
pictures of the claimed roses and disclosed that applicant
had raised the roses. The publications were published
more than I year before applicant's filing date.
The court held that the publications did not place the
rose in the public domain. Information on the grafting
process reqnired to reproduce the rose was not
included in the publications and such .information was
necessary for those of ordinary skill in the art (plant
breeders) to reproduce the rose.), Compare Ex parte
Thomson, 24 USPQ2d 1618 (Bd. Pat. App. & Inter.
1992) (Seeds were commercially available more than
1 year prior to applicant's filing date.One of ordinary
skill in the art could grow the claimed cotton cultivar
from the commercially available seeds. Thus, the publications
describing the cotton cultivar had "enabled
disclosures." The Board distinguished In re LeGrice
by finding that the catalogue picture of the rose of In
re LeGrice was the only evidence in that base. There
was no evidence of commercial availability in
enabling form since the asexually reproduced rose
could not be reproduced from seed. Therefore, the
public would not have possession of the rose by its
picture alone, but the public would havepossession of
the cotton cultivar based on the publications and the
availability of the seeds.).
2121.04 Apparatus and Articles - What
Constitutes Enabling Prior Art
PICTURES MAY CONSTITUTE AN "ENA­
BLING DISCLOSURE"
Pictures and drawings may be sufficiently enabling
to put the public in the possession of the article pictured.
Therefore, such an enabling picture may be
used to reject claims to the article. However, the pic-
August 2001 2100-60
ture must show all the claimed structural features and
how they are put together. Jockmus v. Leviton, 28 F.2d
812 (2d Cir. 1928). See also M!'EP § 2125 for a discussion
of drawings as prior art.
2122 Discussion of Utility in.the
Prior Art
UTILITYNEED NOT BE DISCLOSED IN REF­
ERENCE
In order to constitute anticipatory prior art, a reference
mustidentically disclose the claimed compound,
but no utility need be disclosed by the reference. In re
Schoenwald, 964 F.2d 1122, 22 USPQ2d 1671 (Fed.
Cir. 1992) (The application claimed compounds used
in ophthalmic compositions to treat dry eye syndrome.
The examiner found a printed publication
which disclosed the claimed compound but did not
disclose a use for the compound. The court found that
the claim was anticipated since the compound and a
process of making it was taught by the reference; The
court explained that "no utility need be disclosed for a
reference to be anticipatory of a claim to an old compound."
964 F.2d at 1124, 22USPQ2d at 1673. It is
enough that the claimed compound is taught by the
reference.).
2123 Rejection Over Prior Art's Broad
Disclosure Instead of Preferred
Embodiments
PATENTS ARE RELEVANT AS PRIOR ART
FOR ALL THEY CONTAIN
"The use of patents as references is not limited to
what the patentees describe as their own inventions or
to the problems with which they are concerned. They
are part of the literature of the art.relevant for all they
contain." In re Heck, 699 F.2d 1331, 1332-33,
216 USPQ 1038,1039 (Fed. Cir. 1983) (quoting In
re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275,
777 (CCPA 1968».
A reference may be.relied upon for all that it would
have reasonably suggested to one having ordinary
skill the art, including nonpreferred embodiments.
Merck & Co. v. Biocraft Laboratories, 874 F.2d 804,
10 USPQ2d 1843 (Fed. Cir.), cert.denied, 493 U.S,
975 (1989). See also Celeritas Technologies Ltd. v.
Rockwell International Corp., 150 F.3d 1354, 1361,