2129 Admissions as Prior Art
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Section Frequency Chart
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| 2129 |
I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102.
- However, even if labeled as “prior art,” the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories.
“[W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work.”
- Consequently, the examiner must determine whether the subject matter identified as “prior art” is applicant’s own work, or the work of another.
- In the absence of another credible explanation, examiners should treat such subject matter as the work of another.
II. DISCUSSION OF PRIOR ART IN SPECIFICATION
Where the specification identifies work done by another as “prior art,” the subject matter so identified is treated as admitted prior art.
- Holding applicant’s labeling of two figures in the application drawings as “prior art” to be an admission that what was pictured was prior art relative to applicant’s improvement.
III. JEPSON CLAIMS
Drafting a claim in Jepson format is taken as an implied admission that the subject matter of the preamble is the prior art work of another.
- Holding preamble of Jepson-type claim to be admitted prior art where applicant’s specification credited another as the inventor of the subject matter of the preamble.
- However, this implication may be overcome where applicant gives another credible reason for drafting the claim in Jepson format.
Holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble.
- Moreover, where the preamble of a Jepson claim describes applicant’s own work, such may not be used against the claims.
IV. INFORMATION DISCLOSURE STATEMENT (IDS)
Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.
“The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”
