2131 Anticipation — Application of 35 U.S.C. 102
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A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art.
- To reject a claim as anticipated, the reference's disclosure must teach every element required by the claim under its broadest reasonable interpretation
“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.”
“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 must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required.
2131.01 Multiple Reference 35 U.S.C. 102 Rejections
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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:
- Prove the primary reference contains an “enabled disclosure;”
- Explain the meaning of a term used in the primary reference; or
- Show that a characteristic not disclosed in the reference is inherent.
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.”
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.
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.”
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.
2131.02 Genus-Species Situations
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I. 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.
II. 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.
III. A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE “AT ONCE ENVISAGED” FROM THE DISCLOSURE
“[W]hether a generic disclosure necessarily anticipates everything within the genus … depends on the factual aspects of the specific disclosure and the particular products at issue.”
- For example, when a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the 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.
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 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, P, 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.
In In re Schauman, 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.).
2131.03 Anticipation of Ranges
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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.”
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 broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with “sufficient specificity” to constitute an anticipation of the claims.
In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that “there is no allegation of criticality or any evidence demonstrating any difference across the range.”
In Atofina, 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, even though there was a slight overlap between the reference’s preferred range (150-350 degrees C) and the claimed range. “[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.”
If the prior art disclosure does not disclose a claimed range with “sufficient specificity” to anticipate a claimed invention, any evidence of unexpected results within the narrow range may render the claims unobvious.
The question of “sufficient specificity” is similar to that of “clearly envisaging” a species from a generic teaching.
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 reasoned statement regarding obviousness.
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.”
2131.04 Secondary Considerations
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| 2131.04 |
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
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| 2131.05 |
“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 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.
