2124
2124 Exception to the Rule That the Critical Reference Date Must Precede the Filing Date
IN SOME CIRCUMSTANCES A FACTUAL REFERENCE NEED NOT ANTEDATE THE FILING DATE
The prohibition against post-filing date art applies to “the impermissible application of later knowledge about later art-related facts . . . which did not exist on the filing date.” In re Hogan, 559 F.2d 595, 605 (CCPA 1977).2
2 Hogan involved claims directed to a solid polymer of propylene. The Specification disclosed only crystalline forms. The Examiner and the Board took the position that the claims encompassed both crystalline and amorphous forms of polypropylene, cited post-filing date references disclosing the production of amorphous forms, and found that the full amorphous forms did not exist at the time of filing, and the methods disclosed in the Specification would not have produced amorphous forms. The CCPA held that it was impermissible to test the claims‟ scope of enablement against “later knowledge about later art-related facts (here, amorphous polymers) which did not exist on the filing date.” Hogan, 559 F.2d at 605.
However, it is well settled that breadth of the claims was not enabled. However, it was undisputed that the “use of later publications as evidence of the state of art existing on the filing date of an application” is permissible (id.). See Plant Genetic Systems, N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1344 (Fed. Cir. 2003) (“Report of a first success after 1987 indicates failure or difficulty in or before 1987. Thus the district court properly used later reports as evidence of the state of the art existing in 1987.”).