In Agilent Techs., Inc. v. Synthego Corp., the Federal Circuit addressed the difference between the enablement standard for an anticipatory prior art reference (under 35 U.S.C. § 102) and that for an applicant/patentee’s own disclosure (under 35 U.S.C. § 112).
For an anticipatory prior art reference to be enabling, the reference must “teach a skilled artisan – at the time of filing – to make or carry out what it discloses in relation to the claimed invention without undue experimentation.” Agilent Techs., Inc. v. Synthego Corp., 139 F.4th 1319, 1327 (Fed. Cir. 2025) (quoting In re Morsa, 803 F.3d 1374, 1377 (Fed. Cir. 2015)). But the Federal Circuit confirmed that the prior art reference need not enable the challenged claim in its entirety. Rather, “the reference need only enable a single embodiment of the claim.” Agilent Techs., 139 F.4th at 1327. Furthermore, the prior art reference need not enable one skilled in the art to actually use the invention. (Id. at 1329).
For the applicant/patentee’s own disclosure to be enabling, on the other hand, “the specification must enable one skilled in the art to ‘use’ the invention.” (Id.) (quoting Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005)). And as the Supreme Court stated, “the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” Amgen Inc. v. Sanofi, 598 U.S. 594, 610 (2023). Thus, the Federal Circuit confirmed that the enablement of an anticipatory prior art reference and enablement under Section 112 “are two separate inquiries.” Agilent Techs., 139 F.4th at 1328-29.
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