Introduction
One of the requirements for patentability under United States law is novelty, as prescribed by 35 U.S.C. § 102. Under § 102, an invention is eligible for patent if it is not anticipated by prior art. Anticipation occurs when “each and every limitation of [a] claimed invention [is] disclosed in a single prior art reference,” In re Paulsen, 30 F.3d 1475, 1478–79 (Fed. Cir. 1994); see also In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[A] lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the ‘ultimate or epitome of obviousness.'”) (citation omitted).. In other words, § 102 prevents an applicant from obtaining a patent if the claimed invention is not new or novel.
The Leahy-Smith American Invents Act (“AIA”) passed in 2011 overhauled the United States Patent law system by revising what constitutes prior art. Compare pre-AIA 35 U.S.C. § 102 with AIA 35 U.S.C. § 102; see also MPEP § 2151. Despite the AIA changes, the principles of determining whether prior art anticipates an invention remained unchanged. Thus, in addition to considering recent patent law jurisprudence, practitioners would be remiss to ignore the precedent established by the United States Court of Customs and Patent Appeals (“CCPA”) related to anticipation.
This article summarizes key CCPA decisions that continue to hold merit and remain binding precedent that should be considered when strategizing for anticipation inquiries under § 102.1
Case Summaries
In re Slayter, 276 F.2d 408 (CCPA 1960)
In In re Slayter, an applicant appealed an examiner's rejection that the claimed invention was anticipated. The applicant argued that polyphase materials were not anticipated by the prior art because the metal fibers in the prior art served to hold the glass together and there was no disclosure of the use of fibers to prevent cracking. In rejecting the applicant's arguments, the CCPA explained that “That distinction is not brought out in the claims and, moreover, appears to involve, at best, only a matter of degree. . . . It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.” Id. at 411 (citations omitted)
In re Sivaramakrishnan, 673 F.2d 1383 (CCPA 1982)
In In re Sivaramakrishnan, an applicant appealed an examiner's rejection that a claimed invention directed to a combination of an aromatic polycarbonate resin with a cadmium laurate additive was anticipated by prior art. Id. at 1383. The prior art taught “a flame-resistant polycarbonate resin” and “broadly disclose[d] numerous suitable metals and anions . . . including cadmium laurate.” Id. at 1383–84. The CCPA held that “a reference specifically naming cadmium laurate as an additive amongst a list of suitable salts in polycarbonate resin anticipated the claims.” See MPEP § 2131.02 (citing In re Sivaramakrishnan, 673 F.2d at 1384–85).
In re Petering, 301 F.2d 676 (CCPA 1962)
In In re Petering, an applicant appealed an examiner's rejection that the claimed invention was anticipated by prior art because the prior art “disclose[d] generically the claimed compounds.” Id. at 679. The CCPA held that a generic formula that “encompasses a vast number and perhaps even an infinite number of compounds” cannot be used to establish anticipation. Id. at 681. However, the CCPA held that a generic class limited to 20 compounds was anticipatory. Id. at 682. Notably, the CCPA explained that “the mere number of compounds in [the] limited class which [was] significant,” needed to be considered in combination with other factors, including: (1) the number of substituents was low at each site; (2) the ring positions were limited; and (3) there was a large unchanging structural nucleus, resulting in a finding that the reference sufficiently described each of the various permutations as if each structural formula was drawn or the name was written. Id. at 681. The CCPA also used the phrase, “at once envisage” which continues to be used today when analyzing the scope of a reference disclosure. “It is our opinion that one skilled in this art would, on reading the Karrer patent, at once envisage each member of this limited class, even though this skilled person might not at once define in his mind the formal boundaries of the class as we have done here.” Id. Citing Petering, the MPEP also points out that “[o]ne may look to the preferred embodiments to determine which compounds can be anticipated.” MPEP § 2131.02(III) (citing In re Petering, 301 F.2d at 676); see also Eli Lilli & Co. v. Zenith Goldline Pharma., Inc., 471 F.3d 1369, 1376 (Fed. Cir. 2006) (explaining that Petering disclosed to one skilled in the art a limited class of compounds, thereby rending the claimed invention anticipated).
In re Self, 671 F.2d 1344 (CCPA 1982)
In In re Self, an applicant appealed an examiners rejection that the claimed invention was anticipated by prior art because the prior art “function[ed] differently to solve a different problem,” thereby rending the claimed invention “unobvious” from the prior art. However, the CCPA rejected applicant's argument, explaining that assertions that nonanalogous prior art does not anticipate a claimed invention “are not germane to a § 102 rejection.” Id. at 1351; see also In re Schreiber, 128 F.ed 1473, 1478 (Fed. Cir. 1997) (citing In re Self, 671 F.2d at 1350) (“[T]he question whether a reference is analogous art is irrelevant to whether that reference anticipates.”).
Conclusion
The cases discussed above are merely a small sampling of CCPA precedent that established many of the guiding principles in determining anticipation under § 102. While the CCPA may be gone, it's cases provide a foundation for anticipation inquiries, and they continue to provide useful analyses and arguments to use in modern patent law practice.
1 Between 1963 and 1982, the CCPA issued multiple decisions concerning anticipation. The vast majority of these decision have not been overruled by the CCPA or overturned by an en banc Court of Appeals for the Federal Circuit (“CAFC”) and thus remain binding precedent. See South Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982). Notably, many involved appeals from ex parte prosecution and are cited in the MPEP and, therefore, may be especially useful in responding to examiner rejections.
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