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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).
 
However, there is no ipsissimis verbis test for determining whether a reference discloses a claim element, i.e., identity of terminology is not required. 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).

The Examiner has not established that “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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), “arranged as in the claim under review,” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).


Brown

Anticipation under 35 U.S.C. § 102 is a question of fact. 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).

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).

 “When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.” Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in “at least one of two-digit, three-digit, or four-digit” representations, was held anticipated by a system that offsets year dates in only two-digit formats). MPEP § 2131 (emphasis added).

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

 See, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (“Extrinsic evidence may be considered when it is used to explain, but not to expand, the meaning of a reference [relied upon to show anticipation].”) (emphasis added). ...

"Anticipation is a question of fact" and "factual determinations by the PTO must be based on a preponderance of the evidence." In re Baxter Travenol Lab., 952 F.2d 388, 390 (Fed. Cir. 1991); In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992). A "preponderance of evidence" is defined as "evidence which as a whole shows that the fact sought to be proved is more probable than not." Black's Law Dictionary 1064 (5th ed. 1979).

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)).

KING

When the patentability of dependent claims is not argued separately, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983).

TITANIUM

See, e.g., Titanium Metals Corp. of America. v. Banner, 778 F.2d 775, 780, (Fed. Cir. 1985) (“[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account. D. Chisum, Patents § 3.02.”).

2131.02 Genus-Species Situations [R-6]

I.   A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS


SLAYTER, GOSTELI


The argument is made in the wrong direction. Appellants contend that the claim recites a generic function without any specific implementation and fault the references for actually providing 

implementation examples for the generic function. A species of a genus anticipates the genus. Mikus v. Wachtel, 504 F.2d 1150, 1151 (CCPA 1974); In re Slayter, 276 F.2d 408, 411 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).



II.   A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED


III.   A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE “AT ONCE ENVISAGED” FROM THE DISCLOSURE


OSRAM

Further, as the Federal Circuit has explpained, "how one of ordinary skill in the art would understand the relative size of a genus or species in a particular technology is of critical importance." OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012)

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. 

see also, Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) ("However, a reference can anticipate a claim even if it 'd[oes] not expressly spell out' all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would 'at once envisage' the claimed  arrangement or combination.") (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)).

SCHAUMANN

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).

A prior art reference can anticipate a claimed invention even though it describes the claimed subject matter using different terms. See In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) “([A]lthough appellants would have us hold that Hildebrandt fails as an anticipation because it does not contain a description of the subject matter of the appealed claims, ipsissimis verbis, we cannot countenance a result which so obviously exhalts [sic] form over substance.”).

2131.03 Anticipation of Ranges [R-6]

I.   A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE


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).

II.   PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH “SUFFICIENT SPECIFICITY”


Atofina 

Cf. Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999–1000 (Fed. Cir. 2006) (prior art temperature range of 100 to 500 ºC does not anticipate claimed range of 330 to 450 ºC.; prior art range of 0.001 to 1% oxygen to methylene chloride molar ratio does not anticipate range of 0.1 to 5.0%.; description of a genus in the prior art is not necessarily a disclosure of every species that is a member of that genus).



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.

Moreover, although we appreciate the Examiner’s position that Nam’s CMOS structure is a field-effect transistor (see Ans. 3), we note that disclosure of a genus in the prior art, i.e., field-effect transistor, is not a disclosure of every species that is a member of that genus, i.e., thin film transistor. See Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006).


III.   PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE


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.”).

The Examiner’s rejection is pursuant to 35 U.S.C. § 102(b), and evidence of secondary considerations, such as unexpected results, is not relevant to a rejection under § 102(b).  See In re Wiggins, 488 F.2d 538, 543 (CCPA 1973).

 
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.”).

See Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it.”).
 
 
SELF
 
Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”).


See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (patentability may not be based on limitations not appearing in the claims).


STATE CONTRACTING


We emphasize "anticipated" here, for it is well settled that prior art references need not be analogous art to anticipate. See State Contracting & Eng 'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003)



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