What must be considered when determining if a prior art reference is enabling?

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When determining if a prior art reference is enabling, the key consideration is whether the prior art allows a person skilled in the art to practice the claimed invention without undue experimentation. Public possession implies that the invention was sufficiently disclosed and described so that it is accessible and understandable to someone with the relevant technical expertise at the time of the reference's publication.

A prior art reference must sufficiently enable the claims within the context of its disclosure. If the claimed invention was publicly possessed before the filing date, it indicates that the information was available for use and not just theoretically described. This could demonstrate that the invention is not novel or is obvious, which are crucial points for patentability considerations.

In contrast, exact wording in the claims or the declarations of joint inventors do not directly pertain to enabling prior art. Responses to office actions can provide context for prosecution history but do not themselves determine if prior art is enabling. Thus, focusing on public possession as a criterion for enabling status provides a clear basis for evaluating prior art references.

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