MPEP 2131: Difference between revisions

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35 U.S.C. 102. Conditions for patentability; novelty and  
'''35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.'''
loss of right to patent.


A person shall be entitled to a patent unless -
A person shall be entitled to a patent unless -
Line 58: Line 57:
by the other.
by the other.


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


"A claim is anticipated only if each and every element  
*A claim is anticipated only if every single element of that claim is found, either expressly or inherently, in a single prior art reference.
as set forth in the claim is found, either  
*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.
expressly or inherently described, in a single prior art  
*The elements in the prior art must be arranged as required by the claim, but identity of terminology is not required.
reference." Verdegaal Bros. v. Union Oil Co. of California,
*Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.
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 102: Line 72:
cited to:
cited to:


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


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


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


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


I. TO PROVE REFERENCE CONTAINS AN  
'''I. TO PROVE REFERENCE CONTAINS AN "ENABLED DISCLOSURE"'''
"ENABLED DISCLOSURE"


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


When the claimed composition or machine is disclosed
Example:
identically by the reference, an additional reference
 
may be relied on to show that the primary
''In re Samour'',  
reference has an “enabled disclosure.” In re Samour,  
571 F.2d 559 (Compound claims were rejected under  
571 F.2d 559, 197 USPQ 1 (CCPA 1978) and In re
35 U.S.C. 102(b) over a publication in view of two  
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  
patents. The publication disclosed the claimed compound  
structure while the patents taught methods of  
structure while the patents taught methods of  
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argued that there was no motivation to combine  
argued that there was no motivation to combine  
the references because no utility was previously  
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  
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  
court held that the publication taught all the elements  
of the claim and thus motivation to combine was not  
of the claim and thus motivation to combine was not  
required. The patents were only submitted as evidence  
required. The patents were only submitted as evidence  
of what was in the public's possession before applicant’s  
of what was in the public's possession before applicant’s  
invention.).
invention.)  


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


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


Extrinsic evidence may be used to explain but not
''In re Baxter Travenol Labs.'', 952 F.2d  
expand the meaning of terms and phrases used in the
388 (Baxter Travenol  
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  
Labs. invention was directed to a blood bag system  
incorporating a bag containing DEHP, an additive  
incorporating a bag containing DEHP, an additive  
Line 163: Line 121:
expressly disclose the presence of DEHP. The report,  
expressly disclose the presence of DEHP. The report,  
however, did disclose using commercial blood bags. It  
however, did disclose using commercial blood bags. It  
also disclosed the blood bag system as “very similar  
also disclosed the blood bag system as "very similar  
to [Baxter] Travenol’s commercial two bag blood  
to [Baxter] Travenol’s commercial two bag blood  
container.” Extrinsic evidence (depositions, declarations  
container." Extrinsic evidence (depositions, declarations  
and Baxter Travenol’s own admissions) showed  
and Baxter Travenol’s own admissions) showed  
that commercial blood bags, at the time Becker’s  
that commercial blood bags, at the time Becker’s  
report was written, contained DEHP. Therefore, one  
report was written, contained DEHP. Therefore, one  
of ordinary skill in the art would have known that  
of ordinary skill in the art would have known that  
“commercial blood bags” meant bags containing  
"commercial blood bags" meant bags containing  
DEHP. The claims were thus held to be anticipated.).
DEHP. The claims were thus held to be anticipated.)


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


Extra Reference or Evidence Can Be Used To Show  
Extra Reference or Evidence Can Be Used To Show  
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the Primary Reference
the Primary Reference


“To serve as an anticipation when the reference is  
*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
silent about the asserted inherent characteristic, such  
*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.
gap in the reference may be filled with recourse to  
 
extrinsic evidence. Such evidence must make clear  
Example:
that the missing descriptive matter is necessarily  
 
present in the thing described in the reference, and  
''Atlas Powder Co. v. IRECO, Inc.'',  
that it would be so recognized by persons of ordinary  
190 F.3d 1342 (Two prior art references disclosed blasting  
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  
compositions containing water-in-oil emulsions with  
identical ingredients to those claimed, in  
identical ingredients to those claimed, in  
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ranges with the claimed composition. The only element  
ranges with the claimed composition. The only element  
of the claims arguably not present in the prior  
of the claims arguably not present in the prior  
art  
art compositions was "sufficient aeration . . . entrapped to  
compositions was “sufficient aeration . . . entrapped to  
enhance sensitivity to a substantial degree." The Federal  
enhance sensitivity to a substantial degree.” The Federal  
Circuit found that the emulsions described in  
Circuit found that the emulsions described in  
both  
both  
references would inevitably and inherently have “sufficient
references would inevitably and inherently have "sufficient
aeration” to sensitize the compound in the  
aeration" to sensitize the compound in the  
claimed ranges based on the evidence of record  
claimed ranges based on the evidence of record  
(including test data and expert testimony). This finding  
(including test data and expert testimony). This finding  
of inherency was not defeated by the fact that one  
of inherency was not defeated by the fact that one  
of the references taught away from air entrapment or  
of the references taught away from air entrapment or  
purposeful aeration.). See also In re King, 801 F.2d
purposeful aeration.). )
1324, 1327, 231 USPQ 136, 139 (Fed. Cir. 1986);
 
Titanium Metals Corp. v. Banner, 778 F.2d 775, 782,
*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.
227 USPQ 773, 778 (Fed. Cir. 1985). See MPEP  
 
§ 2112 - § 2112.02 for case law on inherency. Also  
See MPEP § 2112 - § 2112.02 for case law on inherency. Also  
note that the critical date of extrinsic evidence showing  
note that the critical date of extrinsic evidence showing  
a universal fact need not antedate the filing date.  
a universal fact need not antedate the filing date.  
See MPEP § 2124.  
See [[MPEP 2124]].  


===2131.02 Genus-Species Situations===
===2131.02 Genus-Species Situations===


A SPECIES WILL ANTICIPATE A CLAIM TO  
'''A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS'''
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:


"A generic claim cannot be allowed to an applicant
''In re Slayter'', 276 F.2d 408 (Application claimed a genus of 21 specific chemical species  
if the prior art discloses a species falling within the
of compounds. The prior art reference applied against 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  
'''A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED'''
CLAIMED SPECIES ANTICIPATES THE  
CLAIM NO MATTER HOW MANY OTHER SPECIES  
ARE NAMED


A genus does not always anticipate a claim to a species  
*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.
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  
'''A GENERIC CHEMICAL FORMULA WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THE FORMULA WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE FORMULA'''
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  
*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.
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 re Petering, the prior art disclosed a generic  
Example:
chemical formula “wherein X, Y, Z, P, and R'- represent  
 
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  
either hydrogen or alkyl radicals, R a side chain  
containing an OH group.” The court held that this formula,  
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 340: Line 213:
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 “each of the  
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.” The claimed compound was 1 of these  
name." The claimed compound was 1 of these  
20  
20 compounds. Therefore, the reference "described" the claimed compound and the reference anticipated  
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
===2131.03 Anticipation of Ranges===
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===
'''I. A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE'''


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


"[W]hen, as by a recitation of ranges or otherwise,
'''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"'''
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
*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.
RANGE  OVERLAPPING OR TOUCHING
*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."
THE CLAIMED RANGE ANTICIPATES
**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.
IF THE PRIOR ART RANGE
DISCLOSES THE CLAIMED RANGE
WITH "SUFFICIENT SPECIFICITY"


When the prior art discloses a range which touches
''See'', e.g., Atofina v. Great Lakes Chem. Corp, 441  
or overlaps the claimed range, but no specific
F.3d 991, 999, wherein the court held that a reference temperature  
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. Further, while there was  
specificity to be anticipatory.
 
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. “[T]he disclosure
overlap was not sufficient for anticipation.
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  
'''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'''
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  
*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.
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===
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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  
to 35 U.S.C. 102 rejections and thus cannot overcome  
U.S.C. 102 rejections and thus cannot overcome  
a rejection so based.
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  
Arguments that the alleged anticipatory prior art is  
‘nonanalogous art’ or ‘teaches away from the invention’
"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 ‘germane’
solved by the claimed invention, are not germane
to a rejection under section 102.” Twin Disc, Inc. v.  
to a rejection under section 102.  
United States, 231 USPQ 417, 424 (Cl. Ct. 1986)
 
(quoting In re Self, 671 F.2d 1344, 213 USPQ 1,
A reference may be directed to an entirely different problem than  
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 “teaches away” from the  
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.).

Revision as of 01:44, June 5, 2007

← MPEP 2129 ↑ MPEP 2100 MPEP 2132 →


2131 Anticipation — Application of 35 U.S.C. 102(a), (b), and (e)

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.

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