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==[[MPEP 2131|2131 Anticipation — Application of 35 U.S.C. 102(a), (b), and (e)]]== | ==[[MPEP 2131|2131 Anticipation — Application of 35 U.S.C. 102(a), (b), and (e)]]== | ||
<noinclude | <noinclude>__TOC__</noinclude> | ||
35 U.S.C. 102. Conditions for patentability; novelty and | |||
loss of right to patent. | |||
A person shall be entitled to a patent unless - | A person shall be entitled to a patent unless - | ||
Line 55: | Line 57: | ||
to conceive and last to reduce to practice, from a time prior to conception | to conceive and last to reduce to practice, from a time prior to conception | ||
by the other. | by the other. | ||
TO ANTICIPATE A CLAIM, THE REFERENCE | |||
MUST TEACH EVERY ELEMENT OF THE | |||
CLAIM | |||
"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, 2 USPQ2d 1051, 1053 | |||
(Fed. Cir. 1987). “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). | |||
See also MPEP § 2131.02. “The identical | |||
invention must be shown in as complete detail as is | |||
contained in the ... claim.” Richardson v. Suzuki | |||
Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, | |||
1920 (Fed. Cir. 1989). The elements must be arranged | |||
as required by the claim, but this is not an ipsissimis | |||
verbis test, i.e., identity of terminology is not | |||
required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 | |||
(Fed. Cir. 1990). Note that, in some circumstances, it | |||
is permissible to use multiple references in a | |||
35 | |||
U.S.C. 102 rejection. See MPEP § 2131.01. | |||
===2131.01 Multiple Reference 35 U.S.C. 102 Rejections=== | ===2131.01 Multiple Reference 35 U.S.C. 102 Rejections=== | ||
Line 73: | Line 102: | ||
cited to: | cited to: | ||
(A) Prove the primary reference contains an | (A)Prove the primary reference contains an | ||
“enabled disclosure;” | |||
(B)Explain the meaning of a term used in the primary | |||
reference; or | |||
( | (C)Show that a characteristic not disclosed in the | ||
reference | reference is inherent. | ||
See paragraphs I-III below for more explanation of | |||
each circumstance. | |||
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" | |||
' | When the claimed composition or machine is disclosed | ||
identically by the reference, an additional reference | |||
may be relied on to show that the primary | |||
reference has an “enabled disclosure.” In re Samour, | |||
571 F.2d 559, 197 USPQ 1 (CCPA 1978) and In re | |||
Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. | |||
1985) (Compound claims were rejected under | |||
35 | |||
U.S.C. 102(b) over a publication in view of two | |||
patents. The publication disclosed the claimed compound | |||
structure while the patents taught methods of | |||
making compounds of that general class. The applicant | |||
argued that there was no motivation to combine | |||
the references because no utility was previously | |||
known for the compound and that the 35 U.S.C. 102rejection over multiple references was improper. The | |||
court held that the publication taught all the elements | |||
of the claim and thus motivation to combine was not | |||
required. The patents were only submitted as evidence | |||
of what was in the public's possession before applicant’s | |||
invention.). | |||
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 | |||
Extrinsic evidence may be used to explain but not | |||
expand the meaning of terms and phrases used in the | |||
reference relied upon as anticipatory of the claimed | |||
subject matter. In re Baxter Travenol Labs., 952 F.2d | |||
388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Baxter Travenol | |||
Labs. invention was directed to a blood bag system | |||
incorporating a bag containing DEHP, an additive | |||
to the plastic which improved the bag’s red blood cell | |||
storage capability. The examiner rejected the claims | |||
over a technical progress report by Becker which | |||
taught the same blood bag system but did not | |||
expressly disclose the presence of DEHP. The report, | |||
however, did disclose using commercial blood bags. It | |||
also disclosed the blood bag system as “very similar | |||
to [Baxter] Travenol’s commercial two bag blood | |||
container.” Extrinsic evidence (depositions, declarations | |||
and Baxter Travenol’s own admissions) showed | |||
that commercial blood bags, at the time Becker’s | |||
report was written, contained DEHP. Therefore, one | |||
of ordinary skill in the art would have known that | |||
“commercial blood bags” meant bags containing | |||
DEHP. The claims were thus held to be anticipated.). | |||
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 | |||
“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, and | |||
that it would be so recognized by persons of ordinary | |||
skill.” Continental Can Co. USA v. Monsanto Co., | |||
948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. | |||
Cir. 1991) (The court went on to explain that “this | |||
modest flexibility in the rule that ‘anticipation’ | |||
requires that every element of the claims appear in a | |||
single reference accommodates situations in which | |||
the common knowledge of technologists is not | |||
recorded in the reference; that is, where technological | |||
facts are known to those in the field of the invention, | |||
albeit not known to judges.” 948 F.2d at 1268, | |||
20 | |||
USPQ at 1749-50.). Note that as long as there is | |||
evidence of record establishing inherency, failure of | |||
those skilled in the art to contemporaneously recognize | |||
an inherent property, function or ingredient of a | |||
prior art reference does not preclude a finding of | |||
anticipation. Atlas Powder Co. v. IRECO, Inc., | |||
190 | |||
F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. | |||
Cir. 1999) (Two prior art references disclosed blasting | |||
compositions containing water-in-oil emulsions with | |||
identical ingredients to those claimed, in | |||
overlapping | |||
ranges with the claimed composition. The only element | |||
of the claims arguably not present in the prior | |||
art | |||
compositions was “sufficient aeration . . . entrapped to | |||
enhance sensitivity to a substantial degree.” The Federal | |||
Circuit found that the emulsions described in | |||
both | |||
references would inevitably and inherently have “sufficient | |||
aeration” to sensitize the compound in the | |||
claimed ranges based on the evidence of record | |||
(including test data and expert testimony). This finding | |||
of inherency was not defeated by the fact that one | |||
of the references taught away from air entrapment or | |||
purposeful aeration.). See also In re King, 801 F.2d | |||
1324, 1327, 231 USPQ 136, 139 (Fed. Cir. 1986); | |||
Titanium Metals Corp. v. Banner, 778 F.2d 775, 782, | |||
227 USPQ 773, 778 (Fed. Cir. 1985). See MPEP | |||
§ 2112 - § 2112.02 for case law on inherency. Also | |||
note that the critical date of extrinsic evidence showing | |||
a universal fact need not antedate the filing date. | |||
See MPEP § 2124. | |||
===2131.02 Genus-Species Situations=== | |||
A SPECIES WILL ANTICIPATE A CLAIM TO | |||
A GENUS | |||
"A generic claim cannot be allowed to an applicant | |||
of compounds. The prior art reference applied against the | if the prior art discloses a species falling within the | ||
claimed genus." The species in that case will anticipate | |||
the genus. In re Slayter, 276 F.2d 408, 411, | |||
125 | |||
USPQ 345, 347 (CCPA 1960); In re Gosteli, | |||
872 | |||
F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) | |||
(Gosteli claimed a genus of 21 specific chemical species | |||
of bicyclic thia-aza compounds in Markush | |||
claims. The prior art reference applied against the | |||
claims disclosed two of the chemical species. The parties | claims disclosed two of the chemical species. The parties | ||
agreed that the prior art species would anticipate | agreed that the prior art species would anticipate | ||
the claims unless applicant was entitled to his foreign | the claims unless applicant was entitled to his foreign | ||
priority date.) | priority date.). | ||
A REFERENCE THAT CLEARLY NAMES THE | |||
CLAIMED SPECIES ANTICIPATES THE | |||
CLAIM NO MATTER HOW MANY OTHER SPECIES | |||
ARE NAMED | |||
A genus does not always anticipate a claim to a species | |||
within the genus. However, when the species is | |||
clearly named, the species claim is anticipated no | |||
matter how many other species are additionally | |||
named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. | |||
& Inter. 1990) (The claimed compound was named in | |||
a reference which also disclosed 45 other compounds. | |||
The Board held that the comprehensiveness of the | |||
listing did not negate the fact that the compound | |||
claimed was specifically taught. The Board compared | |||
the facts to the situation in which the compound was | |||
found in the Merck Index, saying that “the tenth edition | |||
of the Merck Index lists ten thousand compounds. | |||
In our view, each and every one of those compounds | |||
is ‘described’ as that term is used in 35 U.S.C. | |||
§ | |||
102(a), in that publication.”). Id. at 1718. See also | |||
In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ | |||
441 (CCPA 1982) (The claims were directed to polycarbonate | |||
containing cadmium laurate as an additive. | |||
The court upheld the Board’s finding that a reference | |||
specifically naming cadmium laurate as an additive | |||
amongst a list of many suitable salts in polycarbonate | |||
resin anticipated the claims. The applicant had argued | |||
that cadmium laurate was only disclosed as representative | |||
of the salts and was expected to have the same | |||
properties as the other salts listed while, as shown in | |||
the application, cadmium laurate had unexpected | |||
properties. The court held that it did not matter that | |||
the salt was not disclosed as being preferred, the reference | |||
still anticipated the claims and because the claim | |||
was anticipated, the unexpected properties were | |||
immaterial.). | |||
A GENERIC CHEMICAL FORMULA WILL | |||
ANTICIPATE A CLAIMED SPECIES | |||
COVERED BY THE FORMULA WHEN THE | |||
SPECIES CAN BE “AT ONCE ENVISAGED” | |||
FROM THE FORMULA | |||
When the compound is not specifically named, but | |||
instead it is necessary to select portions of teachings | |||
within a reference and combine them, e.g., select various | |||
substituents from a list of alternatives given for | |||
placement at specific sites on a generic chemical formula | |||
to arrive at a specific composition, anticipation | |||
can only be found if the classes of substituents are | |||
sufficiently limited or well delineated. Ex parte A, | |||
17 | |||
USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If | |||
one of ordinary skill in the art is able to “at once | |||
envisage” the specific compound within the generic | |||
chemical formula, the compound is anticipated. One | |||
of ordinary skill in the art must be able to draw the | |||
structural formula or write the name of each of the | |||
compounds included in the generic formula before | |||
any of the compounds can be “at once envisaged.” | |||
One may look to the preferred embodiments to determine | |||
which compounds can be anticipated. In re | |||
Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962). | |||
In | In In re Petering, the prior art disclosed a generic | ||
chemical formula | chemical formula “wherein X, Y, Z, P, and R'- represent | ||
either hydrogen or alkyl radicals, R a side chain | either hydrogen or alkyl radicals, R a side chain | ||
containing an OH group. | containing an OH group.” The court held that this formula, | ||
without more, could not anticipate a claim to 7- | without more, could not anticipate a claim to 7- | ||
methyl-9-[d, l'-ribityl]-isoalloxazine because the | methyl-9-[d, l'-ribityl]-isoalloxazine because the | ||
Line 146: | Line 340: | ||
the ring positions were limited, and there was a large | the ring positions were limited, and there was a large | ||
unchanging structural nucleus, resulted in a finding | unchanging structural nucleus, resulted in a finding | ||
that the reference sufficiently described | that the reference sufficiently described “each of the | ||
various permutations here involved as fully as if he | various permutations here involved as fully as if he | ||
had drawn each structural formula or had written each | had drawn each structural formula or had written each | ||
name. | name.” The claimed compound was 1 of these | ||
20 compounds. Therefore, the reference | 20 | ||
compounds. Therefore, the reference “described” | |||
the claimed compound and the reference anticipated | |||
the claims. | the claims. | ||
In In re Schauman, 572 F.2d 312, 197 USPQ | |||
5 (CCPA 1978), claims to a specific compound were | |||
anticipated because the prior art taught a generic formula | |||
embracing a limited number of compounds | |||
closely related to each other in structure and the properties | |||
possessed by the compound class of the prior art | |||
was that disclosed for the claimed compound. The | |||
broad generic formula seemed to describe an infinite | |||
number of compounds but claim 1 was limited to a | |||
structure with only one variable substituent R. This | |||
substituent was limited to low alkyl radicals. One of | |||
ordinary skill in the art would at once envisage the | |||
subject matter within claim 1 of the reference.). | |||
Compare In re Meyer, 599 F.2d 1026, 202 USPQ | |||
175 (CCPA 1979) (A reference disclosing “alkaline | |||
chlorine or bromine solution” embraces a large number | |||
of species and cannot be said to anticipate claims | |||
to “alkali metal hypochlorite.”); Akzo N.V. v. International | |||
Trade Comm’n, 808 F.2d 1471, 1 USPQ2d | |||
1241 (Fed. Cir. 1986) (Claims to a process for making | |||
aramid fibers using a 98% solution of sulfuric acid | |||
were not anticipated by a reference which disclosed | |||
using sulfuric acid solution but which did not disclose | |||
using a 98% concentrated sulfuric acid solution.). See | |||
MPEP § 2144.08 for a discussion of obviousness in | |||
genus-species situations. | |||
===2131.03 Anticipation of Ranges=== | ===2131.03 Anticipation of Ranges=== | ||
I.A SPECIFIC EXAMPLE IN THE PRIOR | |||
ART WHICH IS WITHIN A CLAIMED | |||
RANGE ANTICIPATES THE RANGE | |||
"[W]hen, as by a 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. v. Banner, 778 F.2d 775, | |||
227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, | |||
301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) | |||
(emphasis in original) (Claims to titanium (Ti) alloy | |||
with 0.6-0.9% nickel (Ni) and 0.2-0.4% molybdenum | |||
(Mo) were held anticipated by a graph in a Russian | |||
article on Ti-Mo-Ni alloys because the graph contained | |||
an actual data point corresponding to a Ti alloy | |||
containing 0.25% Mo and 0.75% Ni and this composition | |||
was within the claimed range of compositions.). | |||
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" | |||
When the prior art discloses a range which touches | |||
F.3d 991, 999, wherein the court held that a reference temperature | or overlaps the claimed range, but no specific | ||
examples falling within the claimed range are disclosed, | |||
a case by case determination must be made | |||
as to anticipation. In order to anticipate the claims, the | |||
claimed subject matter must be disclosed in the reference | |||
with “sufficient specificity to constitute an anticipation | |||
under the statute.” What constitutes a | |||
“sufficient specificity” is fact dependent. If the claims | |||
are directed to a narrow range, and the reference | |||
teaches a broad range, depending on the other facts | |||
of the case, it may be reasonable to conclude that the | |||
narrow range is not disclosed with “sufficient specificity” | |||
to constitute an anticipation of the claims. | |||
See, e.g., Atofina v. Great Lakes Chem. Corp, 441 | |||
F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. | |||
2006) wherein the court held that a reference temperature | |||
range of 100-500 degrees C did not describe the | range of 100-500 degrees C did not describe the | ||
claimed range of 330-450 degrees C with sufficient | claimed range of 330-450 degrees C with sufficient | ||
specificity to be anticipatory. | specificity to be anticipatory. Further, while there was | ||
Further, while there was | |||
a slight overlap between the reference’s preferred | a slight overlap between the reference’s preferred | ||
range (150-350 degrees C) and the claimed range, that | range (150-350 degrees C) and the claimed range, that | ||
overlap was not sufficient for anticipation. | overlap was not sufficient for anticipation. “[T]he disclosure | ||
of a range is no more a disclosure of the end | |||
points of the range than it is each of the intermediate | |||
points.” Id. at 1000, 78 USPQ2d at 1424. Any evidence | |||
of unexpected results within the narrow range | |||
may also render the claims unobvious. The question | |||
of “sufficient specificity” is similar to that of “clearly | |||
envisaging” a species from a generic teaching. See | |||
MPEP § 2131.02. A 35 U.S.C. 102/103 combination | |||
rejection is permitted if it is unclear if the reference | |||
teaches the range with “sufficient specificity.” The | |||
examiner must, in this case, provide reasons for anticipation | |||
as well as a motivational statement regarding | |||
obviousness. Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. | |||
App. & Inter. 1993) (expanded Board). For a discussion | |||
of the obviousness of ranges see MPEP | |||
§ 2144.05. | |||
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 | |||
“[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.” | |||
Titanium Metals Corp. v. Banner, 778 F.2d 775, | |||
227 | |||
USPQ 773 (Fed. Cir. 1985) (Claims to titanium | |||
(Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum | |||
(Mo) were not anticipated by, although they were | |||
held obvious over, a graph in a Russian article on Ti- | |||
Mo-Ni alloys in which the graph contained an actual | |||
data point corresponding to a Ti alloy containing | |||
0.25% Mo and 0.75% Ni.). | |||
===2131.04 Secondary Considerations=== | ===2131.04 Secondary Considerations=== | ||
Line 184: | Line 469: | ||
Evidence of secondary considerations, such as | Evidence of secondary considerations, such as | ||
unexpected results or commercial success, is irrelevant | unexpected results or commercial success, is irrelevant | ||
to 35 U.S.C. 102 rejections and thus cannot overcome | to 35 | ||
a rejection so based. | U.S.C. 102 rejections and thus cannot overcome | ||
a rejection so based. In re Wiggins, 488 F.2d | |||
538, 543, 179 USPQ 421, 425 (CCPA 1973). | |||
===2131.05 Nonanalogous or Disparaging Prior Art=== | ===2131.05 Nonanalogous or Disparaging Prior Art=== | ||
“Arguments that the alleged anticipatory prior art is | |||
‘nonanalogous art’ or ‘teaches away from the invention’ | |||
or is not recognized as solving the problem | or is not recognized as solving the problem | ||
solved by the claimed invention, are not | solved by the claimed invention, [are] not ‘germane’ | ||
to a rejection under section 102. | to a rejection under section 102.” Twin Disc, Inc. v. | ||
United States, 231 USPQ 417, 424 (Cl. Ct. 1986) | |||
A reference may be directed to an entirely different problem than | (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, | ||
7 | |||
(CCPA 1982)). See also State Contracting & Eng’ g | |||
Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, | |||
68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question | |||
of whether a reference is analogous art is not relevant | |||
to whether that reference anticipates. A reference | |||
may be directed to an entirely different problem than | |||
the one addressed by the inventor, or may be from an | the one addressed by the inventor, or may be from an | ||
entirely different field of endeavor than that of the | entirely different field of endeavor than that of the | ||
claimed invention, yet the reference is still anticipatory | claimed invention, yet the reference is still anticipatory | ||
if it explicitly or inherently discloses every limitation | if it explicitly or inherently discloses every limitation | ||
recited in the claims. | recited in the claims.). | ||
A reference is no less anticipatory if, after disclosing | A reference is no less anticipatory if, after disclosing | ||
the invention, the reference then disparages it. The | the invention, the reference then disparages it. The | ||
question whether a reference | question whether a reference “teaches away” from the | ||
invention is inapplicable to an anticipation analysis. | invention is inapplicable to an anticipation analysis. | ||
Celeritas Technologies Ltd. v. Rockwell International | |||
Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522- | |||
23 (Fed. Cir. 1998) (The prior art was held to anticipate | |||
the claims even though it taught away from the | |||
claimed invention. “The fact that a modem with a single | |||
carrier data signal is shown to be less than optimal | |||
does not vitiate the fact that it is disclosed.”). See Upsher- | |||
Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, | |||
1323, 75 USPQ2d 1213, 1215 (Fed. Cir. | |||
2005)(claimed composition that expressly excluded | |||
an ingredient held anticipated by reference composition | |||
that optionally included that same ingredient); | |||
see also Atlas Powder Co. v. IRECO, Inc., 190 F.3d | |||
1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) | |||
(Claimed composition was anticipated by prior art | |||
reference that inherently met claim limitation of “sufficient | |||
aeration” even though reference taught away | |||
from air entrapment or purposeful aeration.). |