https://www.zotero.org/download/
http://lawlibraryguides.bu.edu/c.php?g=14784&p=79878#5776769
http://ica.library.oregonstate.edu/tutorials/631--Advanced-Zotero
Friday, January 09, 2015
Thursday, January 08, 2015
Wednesday, January 07, 2015
102 - Anticipation
2131 Anticipation — Application of 35 U.S.C.
102 [R-11.2013]
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 anticipate a claim, the disclosure must
teach every element of the claim.
“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). “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.
102 [R-11.2013]
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 anticipate a claim, the disclosure must
teach every element of the claim.
“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). “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.
2131.05 Nonanalogous
or Disparaging Prior Art [R-08.2012]
“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.”
Twin Disc, Inc.v. United
States , 231 USPQ 417, 424 (Cl. Ct. 1986)
(quoting In re Self, 671 F .2d
1344, 213 USPQ 1, 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
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.
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.).
Monday, January 05, 2015
Subscribe to:
Comments (Atom)