2129 Admissions as Prior Art [R-6] - 2100 Patentability

2129 Admissions as Prior Art [R-6]

I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART

READING AND BATES

While a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103. Reading & Bates Constr. Co. v. Baker Energy Resources Corp., 748 F.2d 645, 652, (Fed. Cir. 1984) (reference that lacks enabling disclosure is not anticipating, but “itself may qualify as a prior art reference under § 103, but only for what is disclosed in it” (emphasis in original))

RIVERWOOD

A]n admission of prior art can be relie[d upon for an obviousness determination, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. § 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003).

See Riverwood-Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (citation omitted) (“Valid prior art may be created by the admissions of the parties”).

Riverwood Int’l Corp. v. R.A. Jones & Co., Inc. 324 F.3d 1346, 1354 (Fed. Cir. 2003) (“a statement by an applicant during prosecution identifying certain matter not the work of the inventor as ‘prior art’ is an admission that the matter is prior art”);

II. DISCUSSION OF PRIOR ART IN SPECIFICATION

CONSTANT

An applicant cannot defeat an obviousness rejection by asserting that the cited reference(s) fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro-Device, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes).

NOMIYA

“It is necessary to consider everything appellants have said about what is prior art to determine the exact scope of their admission.” In re Nomiya, 509 F.2d 566, 571 (CCPA 1975).

In re Nomiya, 509 F.2d 566, 570-571 (CCPA 1975) (“We see no reason why appellants’ representations in their application should not be accepted at face value as admissions that Figs. 1 and 2 may be considered ‘prior art’ for any purpose.”); In re Garfinkel, 437 F.2d 1000, 1004 n.2 (CCPA 1971) (“From the record we are uncertain whether the type of ‘prior art’ referred to is of the § 102(f) or § 102(g) variety or whether it is of the ‘known … in this country’ type as in § 102(a). What is clear, however, is that appellant has admitted that as to him the information in Kistler is prior art of some type.”).

It is well established that a patentable invention may lie in the discovery of the source of a problem, even though the remedy may be obvious once the source of the problem is identified. See, e.g., In re Nomiya, 509 F.2d 566, 572 (CCPA 1975).

III. JEPSON CLAIMS

Obviousness is not established where the Patent Office "has not shown the existence of all of the claimed limitations in the prior art or any suggestion leading to their combination in the manner claimed by appellants." In re Ehrreich, 590 F.2d 902, 910 (CCPA 1979).

IV. INFORMATION DISCLOSURE STATEMENT (IDS)