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August 19, 2013


It seems like a borderline frivolous argument by the petitioner. Even when PTO issues a patent, it is not in a position to verify enablement, except to make a colloquial determination that the patent is enabled.
Thus, PTO is not in a much better position to evaluate enablement on the patent it issues than it is to determine the enablement of a prior art publication.

And needless to mention, aside from the above consideration, it would be clearly absurd, from a policy perspective, to impose such a high burden on PTO to prove enablement of the prior art publication.

Preposterous petition. Cert denied.

I'll be sure to quote the PTO's brief back at the examiner the next time I have a "lack of enablement" rejection for an app I'm prosecuting, or better, when I attack the reference on grounds that it's not enabling by submitting an affidavit from an expert saying it's not enabling.

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