Ex parte Ashkenazi

Informative decision only: persuasive authority, not binding precedent. When a patent qualifies as prior art under 35 U.S.C. § 102(e) and the applicant offers no evidence that the reference's own claims lack § 112 support, the reference is entitled to its filing date under In re Wertheim, and the Board will not require it to disclose a utility or satisfy the §§ 101/112 how-to-use requirement for the later-claimed product in order to anticipate. The same disclosure standards apply to § 102(e) and § 102(b) references. No prior precedent directly addressed this issue in the text; the Board read In re Wertheim as limited to whether the reference patent's own claimed invention is supported under § 112, and extended In re Schoenwald (a § 102(b) case) to § 102(e) references. For the examiner, a § 102(e) patent can be cited as anticipating a claimed product without any inquiry into whether it discloses a utility or enables use of that product, and the reference is presumed enabling. For the applicant, arguing that a § 102(e) reference must satisfy §§ 101 and 112 for the later-claimed subject matter is not a winning argument, and the applicant must bring evidence that the reference's own claims are not described and enabled. The Board relied on In re Wertheim (CCPA), In re Schoenwald (Fed. Cir.), Amgen v. Hoechst Marion Roussel (Fed. Cir.), and the Supreme Court's Alexander Milburn and Hazeltine decisions. LEGAL TEST OR STANDARD: Under Wertheim, a patent relied on under § 102(e) must disclose, sufficiently to comply with § 112, the invention claimed in that patent; if it does, it is entitled to its filing date as prior art. Beyond that, no utility need be disclosed for a reference to anticipate a claim to an old compound, and the same disclosure standards apply whether the reference is § 102(e) or § 102(b). The reference is presumed enabling, and the applicant can overcome an anticipation rejection by proving the relevant disclosures are not enabled. TRIGGERING FACTS: Claims to isolated antibodies binding DcR3 were rejected under § 102(e) over Emery, a U.S. patent filed Feb. 4, 1997, which disclosed a polypeptide identical to SEQ ID NO:1 and antibodies binding it. Appellants did not dispute the sequence identity, did not argue undue experimentation, and expressly declined to raise whether Emery's own claimed subject matter was supported under § 112. They argued only that Emery, as § 102(e) art, must satisfy §§ 101 and 112 for the claimed antibodies, and offered no evidence that Emery was not enabling. KEY QUOTE: "Therefore, regardless of whether a reference qualifies as prior art under § 102(e) or § 102(b), the same disclosure standards should apply." (Paper 2005-2208, p. 10) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board distinguished In re Wertheim, 646 F.2d 527, 209 USPQ 554 (CCPA 1981) as concerning only the reference patent's own claimed invention, followed In re Schoenwald, 964 F.2d 1122, 22 USPQ2d 1671 (Fed. Cir. 1992), and relied on Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) and Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003). PRACTICE TIP: Do not argue that a § 102(e) reference must enable or show utility for the claimed product; instead, if you contest the reference's prior-art status, develop actual evidence that the reference's own claims lack § 112 description or enablement, since the reference is presumed enabling.