Category Archives: 35 USC 102

Anticipation Rejections

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Anticipation Rejections

This article provides a framework for traversing an anticipation rejection(s) included in an Office Action during patent prosecution.


Prior Art Determination

In analyzing an anticipation rejection, the practitioner should confirm that the reference is indeed “prior art” in view of the effective filing date of the subject application.  To help further the foregoing, the reader is invited to review the following articles which were published previously on this blog which examine 35 USC 102: Shortcut Table for Analyzing 35 USC 102 and Statutory Bars.


Test | Anticipation

Once it has been determined that the reference is indeed prior art, the patent practitioner should next determine whether the Examiner has articulated a prima facie case of anticipation.  A reference (cited art) will anticipate a patent claim of a subject application when:

  • Each and every recitation of a claim is described (explicitly or inherently) (i.e., “all elements rule”);
  • Single reference (i.e., multiple references cannot be combined for an anticipation rejection except as indicated below in the section entitled “Multiple References”); and
  • Cited elements of the reference must be arranged as required by the claim. (NetMoneyIN v. Verisign., 545 F.3d 1359 (Fed. Cir. 2008))

Each of the foregoing items will be examined in greater detail hereafter.


Explicit Description | Each and Every Element  | Single Reference

To anticipate a claim, MPEP 2131 states:

“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) … 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)….”

Accordingly, “there must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).


Initial Burden | Factual Basis

The Federal Circuit has stated: “the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”  In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).  Accordingly, “the Patent Office has the initial duty of supplying the factual basis for its rejection.  It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

An Examiner is required per 37 CFR 1.104(c)(2) entitled “Examiner’s Action – Rejection of Claims” to: 1) point out with particularity where each and every element of a claim may be found in a cited reference; and 2) explain the pertinence of each cited reference as indicated hereafter:

“In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command.  When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable.  The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.  (37 CFR 1.104(c)(2))

In view of the foregoing, if an Office Action fails to provide the requisite factual basis for an anticipation rejection, it is submitted that the rejection is deficient as the Applicant is left to speculate as to the basis for the rejection.  The BPAI considers such a deficiency reversible error:

“Here, the Examiner has merely directed our attention to an ‘EJB Type’ column in Beust and thus has not clearly shown and has left it up to us to speculate as to how this column in Beust defines resource references within a session EJB.  We can only rule on the basis of the evidence that is provided in support of the rejection, and here we find it deficient.  The allocation of burdens requires that the USPTO produce the factual basis for its rejection of an application under 35 U.S.C. § 102. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)).  The one who bears the initial burden of presenting a prima facie case of unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).  Therefore, we find that the Examiner has not set forth a sufficient initial showing of anticipation, and we find that Appellants have shown error in the Examiner’s rejection of claims 2 and 10.” (Ex parte Dykes et al. Appeal No. 2009-7556 (BPAI))

Furthermore, the Federal Circuit has indicated that sufficiently particular factual findings (“without resort to speculation”) required for an anticipation rejection allow “an appellate court to fulfill its role of judicial review”:

“For an appellate court to fulfill its role of judicial review, it must have a clear understanding of the grounds for the decision being reviewed … necessary findings must be expressed with sufficient particularity to enable our court, without resort to speculation, to understand the reasoning of the Board, and to determine whether it applied the law correctly and whether the evidence supported the underlying and ultimate fact findings … in sum, we hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review.  In particular, we expect that the Board’s anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings.”  Gechter v. Davidson, 1167 F.3d 1454 (Fed. Cir. 1997)

Inherency

As indicated previously, an anticipation rejection requires a cited reference to describe each and every recitation of a claim either explicitly or inherently (see MPEP 2112 – Requirements of Rejection Based on Inherency; Burden of Proof).   To establish inherency, an Examiner must provide “rationale or evidence tending to show inherency” as indicated in MPEP 2112:

“The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) … ‘To establish inherency, the extrinsic 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. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ ” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) …

In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)….”

In view of the foregoing, the Examiner does not satisfy their burden in establishing inherency if missing descriptive matter is “probably or possibly present” in the cited reference.


Cited Elements of a Reference Must be Arranged as Required by the Claim

An Examiner is unable to pick and choose various teachings from a cited reference in furthering an anticipation rejection:

“In an anticipation rejection, ‘it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.’ Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).

Rather, the reference must ‘clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.’ Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).  Thus, while ‘[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection, . . . it has no place in the making of a 102, anticipation rejection.’ Arkley, 455 F.2d at 587-88.” (see Ex Parte Zebedee et al. Appeal No. 2010-6014 (BPAI))

The Federal Circuit in Therasense, Inc. and Abbott Laboratories v. Becton, Dickinson and Company, and Nova Biomedical (CAFC 2009) stated:

“The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’ Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). ‘[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.’ Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).”

In view of the above, it is clear that even if the cited reference describes all of the features of a claim included in the subject patent application, an anticipation rejection is likely deficient if the cited elements are not arranged as required by the claim.  More specifically, if the cited elements relied upon are included in disparate disclosures of the cited reference which are “not directly related to each other,” it is likely that the anticipation rejection is deficient because impermissible “picking and choosing” has probably occured (see Arkley).


Claim Interpretation | Broadest Reasonable Construction

As indicated in MPEP 2111, “the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the ‘broadest reasonable interpretation’ standard:

The Patent and Trademark Office (‘PTO’) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004)….”

Regarding unreasonably broad claim interpretations furthered by the USPTO, the Federal Circuit has stated:

“Although the PTO emphasizes that it was required to give all ‘claims their broadest reasonable construction’ particularly with respect to claim 4′s use of the open-ended term ‘comprising,’ see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997) (‘the open-ended term comprising . . . means that the named elements are essential, but other elements may be added’), this 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) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed.Cir.1983)).

The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 61 S.Ct. 235, 85 L.Ed. 132 (1940) (‘The claims of a patent are always to be read or interpreted in light of its specification.’).” (In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010)

In view of the above, it is improper if an Examiner employs “an unreasonable claim construction and a strained reference interpretation that is inconsistent with the reach of the claimed subject matter when given its broadest reasonable interpretation consistent with the subject Specification as it would have been understood by one of ordinary skill in the art.” (see Ex parte Ma et al., Appeal No. 2010-3794 (BPAI 2010)).


Multiple References

MPEP 2131 indicates that: “in some circumstances, it is permissible to use multiple references in an anticipation rejection.”  Specific instances where multiple references may be utilized in furthering an anticipation rejection are indicated in MPEP 2131.01 “Multiple Reference 35 USC 102 References”: “(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 is inherent.”

Shortcut Table for Analyzing 35 USC 102

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To assist one in quickly analyzing 35 USC 102, the following “shortcut” table and accompanying commentary is herein provided for your convenience:

35 USC 102
A person shall be entitled to a patent unless:
Section Actor Action Timing Location
(a)
 Third-party Known or used Before invention USA




Third-party Patented or described in a printed publication Before invention Globally
_________
(b)
 Anyone (including inventor) Patented or described in a printed publication More than one year before filing Globally

Anyone (including inventor) Public use or on sale More than one year before filing USA

(c) Inventor Abandoned Invention

(d)
 Inventor Patented or subject of an Inventors certificate in Foreign country Foreign application filed more than twelve months before domestic filing. Foreign country

(e)

____



 Third-party

____

____

____

 (e)(1) – Publication by WIPO/USPTO.

(e)(2) – Patent

Domestic – USA: (Published or patented) AND filed before invention

PCT : 1) WIPO publication of an International Application (PCT), filed on or after 11.29.00) AND filed before invention; 2) designate U.S.; and 3) publish in English (if filed before 11.29.00, use Pre-AIPA rules – see below)

(f) Inventor Not the actual inventor

(g) Third-party (g1) Interference – another establishes they invented first and did not abandon, suppress or conceal.

(g2) Another invented first  in USA and did not abandon, suppress or conceal – “reasonable diligence” applicable here.


“Printed Publication”

The primary factors that must be examined for determining whether a reference qualifies as a  “printed publication” include: 1) dissemination; and 2) public accessibility.  (See MPEP 2128.01)


“Patented”

The term “patented” as used above in sections (a) / (b) / (d) refers to the date that a patent was granted (not the date that the patent application was filed).  (see MPEP 2126 – Availability of a Document as a “Patent” for Purposes of Rejection Under 35 USC 102(a), (b) and (d).


35 USC 102(e)

Section (e) is applicable to references which are either: 1) U.S. patents;  2) U.S. published applications (35 USC 122(b));  or 3) WIPO publications of  international applications (IA) filed under PCT Article 21(2) ( international application has an international filing date on or after November 29, 2000).

MPEP 706.02(f)(1) indicates that, “the 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 … If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined: (1) If the international application meets the following three conditions:  (a) an international filing date on or after November 29, 2000; (b) designated the United States; and (c) published under PCT Article 21(2) in English, then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).”

If the international application has an international filing date prior to November 29, 2000, the pre-AIPA rules must be followed which require:

  • U.S. Patents:    Allocate 102(e) date to either: fulfillment of 35 USC 371(c)(1)(2) and (4) or filing date of later-filed U.S. application (whichever is earlier).
  • U.S. Patent Publication/WIPO Publication (direct):   For U.S. patent publications and WIPO publications which result directly from the international application, no 102(e) date exists.    Instead, the publication date may be utilized for 102(a) or 102(b).
  • U.S. Patent Publication (benefit claim):   If a U.S. patent publication claims benefit to an international application filed prior to November 29, 2000, the actual filing date of the later-filed U.S. application is the 102(e) date.

The MPEP includes a convenient  35 USC 102(e) Flowchart for determining 35 USC 102(e) dates.   Additionally, it must be remembered that international applications (PCT) which fail to either publish in English or designate the U.S. WILL NOT be afforded a 35 USC 102(e) date, even if the international application claims benefit to an earlier-field U.S. application (non-provisional/provisional).   However, such a reference may instead qualify under 35 USC 102(a) or 35 USC 102(b) as of its publication date.

An earlier filing date (than the application filing date) may be afforded to the subject application if a benefit claim is properly made therein to: 1) a provisional patent application under 35 USC 119(e);  2) a nonprovisional patent application under 35 USC 120; or 3) an international application under 35 USC 365(c).

Further, it must be remembered that an earlier filed application must in all instances provide 35 USC 112, first paragraph support for the claimed subject matter of the later filed application.

The MPEP provides an extensive overview of 35 USC 102(e) (see MPEP 706.02(f)(1) – Examination Guidelines for Applying References under 35 USC 102(e)).   Additionally, the USPTO has provided the following guidance regarding this section: USPTO – Questions and Answers regarding 35 USC 102(e)


Overlap of 35 USC 102 Sections – Order of Application in Formulating a Prior Art Rejection

1)  35 USC 102(b)

One may have noticed that a reference can qualify for multiple sections of 35 USC 102; more specifically, some overlap between sections (a), (b) and (e) may arise.   In determining the order of application of the aforementioned sections in formulating a prior art rejection which is included in an office action, Examiners will typically apply 35 USC 102(b) first as this section is a “statutory bar” which is absolute (e.g., cannot utilize a rule 1.131 affidavit to overcome a 102(b) rejection).

2)  35 USC 102(e)

Next, 35 USC 102(e) will be typically applied as references here are treated as “special” (e.g., application filing date is used under certain circumstances).  It should be noted that a reference which is asserted under 35 USC 102(e) may be disqualified further to 35 USC 103(c) if the reference is: a) only prior art under 35 USC 102(e) (f), or (g); b) applied in a 35 USC 103(a) rejection; and c) the reference and subject application were commonly owned or subject to an obligation of assignment at the time of invention.

3)  35 USC 102(a)

A printed publication (e.g., patent publication) which is published (anywhere and “by another”) prior to the subject applications effective  filing date may qualify under this section.   Accordingly, if a reference is published prior to the effective filing date of the subject application, the aforementioned exclusion (35 USC 103(c)) will not apply as the reference will qualify under 102(a) (or 102(b) if published more than a year prior to the subject application filing).

If the aforementioned scenario arises, the Applicant may consider: 1)  “swearing behind” the 102(a) reference utilizing a 1.131 Affidavit or Declaration (CANNOT utilize 1.131 to swear behind 102(b) references), 2) arguing differences between claim recitations and the cited art; 3)  amending the claim(s); or 4) perfecting a benefit claim to an earlier-filed application (see also MPEP 706.02(b) – Overcoming a 35 USC 102 Rejection Based on a Printed Publication or Patent.

Further details regarding the foregoing may be found at MPEP 706.02(a) – Rejections Under 35 USC 102 (A), (B) or (E).

Statutory Bars

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Statutory Bars

This article examines the various time-related deadlines (statutory bars) that are applicable to filing a patent application either domestically at the United States Patent and Trademark Office (USPTO) or internationally.


Domestic (USPTO) Filing

One of the first questions that a patent attorney should ask an inventor during the initial inventor interview is whether the invention was disclosed/used publicly, sold, or offered for sale.  This inquiry is critical as 35 U.S.C. 102(b) bars patentability of an invention if various conditions are present.  More specifically, further to the aforementioned law, patentability will be barred in the United States if MORE THAN ONE-YEAR PRIOR TO filing in the United States, 1) the invention was patented or described in a printed publication ANYWHERE in the world; 2) the invention was in PUBLIC USE in the United States; OR the invention was ON SALE in the United States.

A simple shortcut for remembering the various 102(b) statutory bars is as follows: the publication or patenting of an invention can occur anywhere, while the use or sale is limited to this country (the United States), MORE THAN one year before the U.S. filing.  Additionally, although the statutory bars are absolute, there is a limited experimental-use exception (which requires its own post) which if applicable, may not bar patentability.

Furthermore, in addition to the aforementioned inquiry, the attorney/agent should ask the inventor whether any web pages, handouts, presentations, web pages, brochures, etc. were ever generated for the invention (even a single copy or a single public use).  The reason It is important to ask whether any of the aforementioned items were generated is because the Inventor may not realize that a public disclosure even occurred until asked about specific items.  If any of the aforementioned items were indeed generated and disclosed to the public, patentability may be lost if a year has elapsed since the public disclosure.  However, if a disclosure has occurred, and a year has not elapsed, the practitioner should immediately inform the inventor (or organization that will likely be assigned the patent) that patentability will be lost unless the application is filed within the one-year grace period.  (see MPEP 2133.03).


Foreign Filing

Although these statutory bars may seem harsh, in comparison to most other foreign jurisdictions, the United States has one of the most liberal grace periods (of one-year).  In fact, many foreign countries do not provide any sort of grace period prior to filing; therefore, any sort of disclosure of an invention prior to filing may bar patentability in such countries. However, as most foreign countries allow an Applicant to file a patent application therein within one year of filing in another country (Paris Convention), the Applicant may want to firstly file the application in the United States (and than file within the foreign country within a year) if foreign protection will likely be sought. However, notwithstanding the foregoing, if foreign protection will be sought, a proper investigation should be conducted for each particular foreign country (as patent protection is regional) prior to any public disclosure/use, sale, or offer for sale.


Conclusion

Overall, it is nearly always preferable to firstly file a patent application prior to any public disclosure/use, sale, or offer for sale.  However, as the “real world” does not always provide for such a preference, a patent attorney should be consulted prior to any public disclosure/use, sale or offer for sale to avoid the harsh consequences discussed above.