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Date Published

Even if a skilled addressee is "clearly and unmistakably" directed to an invention from the prior art, there must still be sufficient disclosure in that art to enable the skilled addressee to put the invention into practice, i.e. the disclosure must be an 'enabling' disclosure.

"The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication."

Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at page 549.

Similarly, in Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689, Dixon J referred to the:

"well-settled rule that a prior publication, giving information that does not become part of the common knowledge, does not invalidate a subsequent patent unless it supplies enough information to enable a person of proper skill in the art to produce the same mechanical device or appliance or carry out the process claimed in the later specification."

In Asahi Kasei Kogyo KK's Application [1991] RPC 485, the court held (citing Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 613):

"to constitute an anticipation of a claim to a new chemical compound by a prior document, the disclosure in that prior document must be an enabling disclosure."

Where a citation indicates the substance in question was made, there is an increased presumption that the disclosure is enabling.

Examiners should assume in the first instance that a citation is an enabling disclosure, unless this is manifestly not so. If the applicant argues against a novelty objection on the basis that the disclosure was not enabling, the onus is on the applicant to demonstrate this is the case.

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