Editing MPEP 2131

<noinclude>{{MPEP Section|2129|2100|2132}}</noinclude>

==[[MPEP 2131|2131 Anticipation — Application of 35 U.S.C. 102(a), (b), and (e)]]==

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{{Statute|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)the invention was known or used by others in this country, 
or patented or described in a printed publication in this or a 
foreign country, before the invention thereof by the applicant for a 
patent, or

(b)the invention was patented or described in a printed publication 
in this or a foreign country or in public use or on sale in 
this country, more than one year prior to the date of application for 
patent in the United States, or

(c)he has abandoned the invention, or

(d)the invention was first patented or caused to be patented, 
or was the subject of an inventor’s certificate, by the applicant or 
his legal representatives or assigns in a foreign country prior to the 
date of the application for patent in this country on an application 
for patent or inventor's certificate filed more than twelve months 
before the filing of the application in the United States, or 

(e)the invention was described in — (1) an application for 
patent, published under section 122(b), by another filed in the 
United States before the invention by the applicant for patent or 
(2) a patent granted on an application for patent by another filed in 
the United States before the invention by the applicant for patent, 
except that an international application filed under the treaty 
defined in section 351(a) shall have the effects for the purposes of 
this subsection of an application filed in the United States only if 
the international application designated the United States and was 
published under Article 21(2) of such treaty in the English language; 
or

(f)he did not himself invent the subject matter sought to be 
patented, or

(g)(1)during the course of an interference conducted under 
section 135 or section 291, another inventor involved therein 
establishes, to the extent permitted in section 104, that before such 
person’s invention thereof the invention was made by such other 
inventor and not abandoned, suppressed, or concealed, or (2) 
before such person’s invention thereof, the invention was made in 
this country by another inventor who had not abandoned, suppressed, 
or concealed it. In determining priority of invention 
under this subsection, there shall be considered not only the 
respective dates of conception and reduction to practice of the 
invention, but also the reasonable diligence of one who was first 
to conceive and last to reduce to practice, from a time prior to conception 
by the other.
|}


'''TO ANTICIPATE A CLAIM, THE REFERENCE MUST TEACH EVERY ELEMENT OF THE CLAIM'''

*A claim is anticipated only if every single element of that claim is found, either expressly or inherently, in a single prior art reference.
*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.
*The elements in the prior art must be arranged as required by the claim, but identity of terminology is not required.
*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=== 

Normally, only one reference should be used in 
making a rejection under 35 U.S.C. 102. However, a 
35 U.S.C. 102 rejection over multiple references has 
been held to be proper when the extra references are 
cited to:

(A) Prove the primary reference contains an 
"enabled disclosure;" (See para. I, below)

(B) Explain the meaning of a term used in the primary 
reference (See para. II, below); or 

(C) Show that a characteristic not disclosed in the 
reference is inherent (See para. III, below). 

See paragraphs I-III below for more explanation of 
each circumstance.

'''I. TO PROVE 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."

Example:

''In re Samour'', 
571 F.2d 559 (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. 102 rejection 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

Example:

''In re Baxter Travenol Labs.'', 952 F.2d 
388 (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.

Example:

''Atlas Powder Co. v. IRECO, Inc.'', 
190 F.3d 1342 (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.). )

*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.

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 if the prior art discloses a species falling within the claimed genus.
*The species in that case will anticipate the genus.

Example:

''In re Slayter'', 276 F.2d 408 (Application claimed a genus of 21 specific chemical species 
of compounds. The prior art reference applied against the 
claims disclosed two of the chemical species. The parties 
agreed that the prior art species would anticipate 
the claims unless applicant was entitled to his foreign 
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.

'''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.

Example:

In ''In re Petering'', the prior art disclosed a generic 
chemical formula "wherein X, Y, Z, P, and R'- represent 
either hydrogen or alkyl radicals, R a side chain 
containing an OH group." The court held that this formula, 
without more, could not anticipate a claim to 7-
methyl-9-[d, l'-ribityl]-isoalloxazine because the 
generic formula encompassed a vast number and perhaps 
even an infinite number of compounds. However, 
the reference also disclosed preferred 
substituents for X, Y, Z, R, and R' as follows: where 
X, P, and R' are hydrogen, where Y and Z may be 
hydrogen or methyl, and where R is one of eight specific 
isoalloxazines. The court determined that this 
more limited generic class consisted of about 20 compounds. 
The limited number of compounds covered 
by the preferred formula in combination with the fact 
that the number of substituents was low at each site, 
the ring positions were limited, and there was a large 
unchanging structural nucleus, resulted in a finding 
that the reference sufficiently described "each of the 
various permutations here involved as fully as if he 
had drawn each structural formula or had written each 
name." The claimed compound was 1 of these 
20 compounds. Therefore, the reference "described" the claimed compound and the reference anticipated 
the claims.

===2131.03 Anticipation of Ranges===

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

*When, 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

'''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 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, wherein the court held that a reference temperature 
range of 100-500 degrees C did not describe the 
claimed range of 330-450 degrees C with sufficient 
specificity to be anticipatory.

Further, while there was 
a slight overlap between the reference’s preferred 
range (150-350 degrees C) and the claimed range, that 
overlap was not sufficient for anticipation.

'''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'''

*Anticipation 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.

===2131.04 Secondary Considerations===

Evidence of secondary considerations, such as 
unexpected results or commercial success, is irrelevant 
to 35 U.S.C. 102 rejections and thus cannot overcome 
a rejection so based.

===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 
solved by the claimed invention, are not germane 
to a rejection under section 102. 

A reference may be directed to an entirely different problem than 
the one addressed by the inventor, or may be from an 
entirely different field of endeavor than that of the 
claimed invention, yet the reference is still anticipatory 
if it explicitly or inherently discloses every limitation 
recited in the claims.

A reference is no less anticipatory if, after disclosing 
the invention, the reference then disparages it. The 
question whether a reference "teaches away" from the 
invention is inapplicable to an anticipation analysis.