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2131

2131 Anticipation - Application of 35 U.S.C. 102(a), (b), and (e) [R-1]

Bond

For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element of the claimed invention must be identically shown in a single reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).

[T]his court has instructed that any such construction be “consistent with the specification, ... and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).

Brown

According to the single source rule, all the claim's limitations must be contained in a single reference, see, e.g., Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).

According to the single source rule, all the claim's limitations must be contained in a single reference, see, e.g., Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001), and 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).

Richardson

For a reference to anticipate a claim “[e]very element of the claimed invention must be literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd. , 868 F.2d 1226, 1236 (Fed. Cir. 1989) (emphasis added).
 
Verdegaal

“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).

2131.01 Multiple Reference 35 U.S.C. 102 Rejections

I.    TO PROVE REFERENCE CONTAINS AN "ENABLED DISCLOSURE"

Extra References and Extrinsic Evidence Can Be Used To Show the Primary Reference Contains an "Enabled Disclosure"

SAMOUR

While it is entirely appropriate to rely on another reference to clarify a fact in the anticipating reference, see, e.g., In re Samour, 571 F.2d 559, 562, 197 USPQ 1, 4 (CCPA 1978), the supporting reference must in fact accomplish that purpose.

II.    TO EXPLAIN THE MEANING OF A TERM USED IN THE PRIMARY REFERENCE

Extra References or Other Evidence Can Be Used to Show Meaning of a Term Used in the Primary Reference

III.    TO SHOW THAT A CHARACTERISTIC NOT DISCLOSED IN THE REFERENCE IS INHERENT

Extra Reference or Evidence Can Be Used To Show an Inherent Characteristic of the Thing Taught by the Primary Reference

Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.”)
 
The use of extrinsic evidence is permissible to show that the missing descriptive material is necessarily present in the prior art reference description and that it would be so recognized by persons of ordinary skill. Continental Can Co, U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).

2131.02 Genus-Species Situations [R-6]

Petering

In In re Petering, 301 F.2d 676 (CCPA 1962), the court noted that the description of a broad generic formula, without more, even though encompassing Appellants’ claims, did not serve as an anticipatory disclosure. Id. at 681. 

In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview of § 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978).

2131.03 Anticipation of Ranges [R-6]

Atofina

In Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006), the court stated that a temperature range of 100 to 500°C which entirely encompassed a range of 330 to 450°C did not anticipate that narrower range because "[g]iven the considerable difference between the claimed range and the range in the prior art, no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim."

We are guided by the principle that the claimed subject matter must be disclosed in the reference with sufficient specificity in order to constitute an anticipation. Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999 (Fed. Cir. 2006). In the Atofina case, neither a disclosure of a broad range of 100-500° C., nor a disclosure of a narrower preferred range of 150-350° C., was found to anticipate a claimed range of 330-450° C., despite the former range fully encompassing the claimed range and the latter range having a degree of overlap with the claimed range. Id. The Federal Circuit noted, in this respect, that the disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points. Id.

TITANIUM

“It is also an elementary principle of patent law that when, as by recitation of ranges, or otherwise, a claim covers several compositions, the claim is “anticipated” if one of them is in the prior art.” Titanium Metals Corp. of Am. v. Banner, 778 F.2d. 775, 782 (Fed. Cir. 1985). While the referenced case is directed to chemical compositions, we find that it is equally applicable to claims which provide limitations in the alternative. 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).

2131.04 Secondary Considerations

WIGGINS

See In re Wiggins, 488 F.2d 538, 543 (CCPA 1973) (stating that evidence of commercial success, unexpected results, etc. is not pertinent to a rejection made under § 102(b), and that such evidence “no matter how striking could not overcome a rejection of a claim based on its lack of novelty. It simply is not relevant or material to that point.”).
 
2131.05 Nonanalogous >or Disparaging Prior< Art [R-5]

Atlas Powder Co.

“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art.”) (internal citations omitted).

Celeritas

The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis. Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even though it taught away from the claimed invention.)

“Teaching away” is irrelevant to anticipation. Celeritas Techs., Ltd. v. Rockwell Int’l Corp. , 150 F.3d 1354, 1361 (Fed. Cir. 1998) (citations omitted) (“[T]he question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”).
 
SELF
 
Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

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