102‎ > ‎

not in mpep

102 - relevant cases cited in BPAI decisions that are not in (this section of) the MPEP
 
ABBOTT

There is no per se prohibition of patenting a “new form” of a compound. To the contrary, there are numerous cases in which a new form of a known compound was determined to be patentable. See, e.g., Abbott Labs. v. Sandoz Inc., 566 F.3d 1282 (Fed. Cir. 2009).
 
AKAMAI
 
A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.Rosco v. Mirror Lite, 304 F.3d 1373, 1380 (Fed. Cir. 2002). “[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from the prior art reference's teaching that every claim [limitation] was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment,Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (internal quotation marks and alterations omitted).
 
 
ARKLEY

To anticipate Appellants’ claimed invention, a reference must lead one of ordinary skill in the art to a product which falls within the scope of the claim "without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
 
For example, to anticipate a chemical compound a “reference must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (further noting that “[s]uch picking and choosing may be entirely proper in the making of a § 103, obviousness rejection, . . . but it has no place in the making of a § 102, anticipation rejection.” Id. at 587-88.).

BLACKBOARD
 
See Also Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1377-1381 (Fed. Cir. 2009)( If a limitation is optional, then prior art without the optional limitation can anticipate).
 
CROWN

the reference "must describe the patented subject matter with sufficient clarity and detail to establish that the subject matter existed in the prior art and that such existence would be recognized by persons of ordinary skill in the field of the invention." Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002) (citations omitted).

GARDINER
 
In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof.”).
 
GECHTER
 
In an appeal from a rejection for anticipation, Appellants must explain which limitations are not found in the reference. See Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (“[W]e expect that the Board’s anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings.” (emphasis added))
 
As the Appellant, Kim bears the procedural burden of showing harmful error in the Examiner’s rejections. See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) ("[W]e expect that the Board's anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings.") (emphasis added).
 
KLOSTER
 
"[A]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
 
LANTECH
 
See Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors);
 
LORAL
 
See also Loral Fairchild Corp. v. Sony Electronics Corp., 181 F.3d 1313, 1321 (Fed.Cir.1999) (holding that the claim language itself indicated that the steps had to be performed in their written order because the second step required the alignment of a second structure with a first structure formed by the prior step.);
 
MANTECH
 
See also Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc. , 152 F.3d 1368, 1375-76, (Fed.Cir.1998) (holding that the steps of a method claim had to be performed in their written order because each subsequent step referenced something logically indicating the prior step had been performed).
 
MEHL

Under the principles of inherency, if the prior art necessarily operates exactly as claimed, then the claimed invention is met. MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). That a claim feature may possibly, or even probably, result from the prior art is not sufficient to show inherency. Id.
 
NET MONEYIN
 
To anticipate under § 102, the prior art reference “must not only disclose all elements within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIn, Inc. v. Verisign, Inc. 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted).

“Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. See also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”).
 
It is an established legal principle that "unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
 
"[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation." Id. "Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention." Id. "[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." Id., quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
 
NEWELL

Though an inherent property need not have been known in the prior art to establish anticipation, when an inherent property is relied upon as a reason to combine references, the property must have been known in the art. See In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989) (“a retrospective view of inherency is not a substitute for some teaching or suggestion which supports the selection and use of various elements in the particular claimed combination.”).

ODDZON

Furthermore, a person is barred by 35 U.S.C. § 102(f) from obtaining a patent on that which is obtained from someone else whose possession of the subject matter is inherently “prior.” See OddzOn Prods., Inc. v. Just Toys, Inc. , 122 F.3d 1396, 1401 (Fed. Cir. 1997) (“Section 102(f) provides that a person shall be entitled to a patent unless ‘he did not himself invent the subject matter sought to be patented.’ This is a derivation provision, which provides that one may not obtain a patent on that which is obtained from someone else whose possession of the subject matter is inherently ‘prior.’”). Derivation of an invention from the work of another can be applied as § 102(f) prior art in a rejection based on §§ 102(f) and 103. Id. at 1403-04 (“[S]ubject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of §§ 102(f) and 103.”).
 
PERRICONE

When “a claimed new benefit or characteristic of an invention otherwise in the prior art” is an inherent property of the old invention, “the new realization alone does not render the old invention patentable.”
Perricone v. Medicis Pharm. Corp. , 432 F.3d 1368, 1377 (Fed. Cir. 2005). “[A] limitation or the entire invention is inherent and in the public domain if it is the ‘natural result flowing from’ the explicit disclosure of the prior art.” Id. (citations omitted).

ROBERTSON
 
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means).
 
SEACHANGE
 
In any event, arguments that allegedly anticipatory prior art teaches away from the claimed invention are not germane to a rejection under 35 U.S.C. § 102. See Seachange Int’l, Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005).
 
SKINNER
 
"[T]he examiner must provide some evidence or scientific reasoning to establish the reasonableness of the examiner’s belief that the functional limitation is an inherent characteristic of the prior art" before the burden is shifted to Applicants to disprove the inherency. Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
 
TURLAY

An anticipation rejection cannot be predicated on an ambiguous reference. Rather, disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962).

WILDER
 
“[T]he statute provides for what may be said to be a presumption of novelty in the language of section 102 ‘a person shall be entitled to a patent unless ---’ (Emphasis added). What this means, in an ex parte proceeding to obtain a patent, is that the Patent Office has the initial burden of coming forward with some sort of evidence tending to disprove novelty.” In re Wilder, 429 F.2d 447, 450 (CCPA 1970).

Comments