Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 12
scope of the count.16 The reason for this difference is that neither party need be able to claim the
entire scope of the count. Cf. 37 C.F.R. § 1.601(f) (last sentence describing a "phantom count").
Hence, the purpose of the constructive reduction to practice is to show an anticipation of the
count within the meaning of 35 U.S.C. 102(g), not to show that the party is entitled to a claim
with the full scope of the count. A claim is anticipated by disclosure in the prior art of a single
embodiment within the scope of the claim, even if the claim encompasses more than that
embodiment. Nevertheless, the embodiment must be adequately described and enabled to be
counted as an anticipation. E.g., United States v. Adams, 383 U.S. 39, 50 (1966) (inoperable
embodiments do not anticipate); In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.
Cir. 1985) ("well-settled" that an enabling disclosure is required for anticipation). A disclosure is
presumed to be enabling, In re Cortright, 165 F.3d 1353, 1356-57, 49 USPQ2d 1464, 1466 (Fed.
Cir. 1999), absent some clear indication to the contrary, id. at 1360, 49 USPQ2d at 1469. While
it is true that Tsui relies heavily on "prophetic" examples, use of a prophetic example does not
automatically make a disclosure non-enabling. The burden is on the movant to provide and
explain evidence that the prophetic examples together with other parts of the disclosure are not
enabling. Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ
409, 414 (Fed. Cir. 1984).
Factors to be considered in determining whether a disclosure would require undue
experimentation ... include (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of the art,
16 Gregory acknowledges as much. E.g., 882 Paper No. 127 at 13-14.
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