Prior art references

In Procter Gamble (P G) v. Teva Pharmaceuticals (CAFC 2009), the inventor of the osteoporosis drug risedronate attempted to swear behind a prior art reference however, the court rejected the evidence because the notebook was unwitnessed and was not corroborated by any other evidence. P G won the case on other bases, but nevertheless you get the idea. 

A key element of 102(a) prior art is that it relates to the date of the invention by the applicant. For a 102(a) reference date to effectively block the applicant s work, the 102(a) event must have occurred before the date of the invention by the applicant. Flowever, the provisions of 102(b) provide an important limit to the first-to-invent rule. The section of prior art defined in 102(b) is referred to as the absolute bar because it limits how far one can go in antedating a prior art reference to prove earlier invention in the United States. Specifically, a patent for an invention cannot be obtained in the United States if the invention was patented or described in a printed publication (or in public use or on sale in this country), more than 1 year before the date of application for patent in the United States. Thus, even if the applicant made the invention before the 102(b) event, she will be barred from being granted a patent if she does not file the patent application within 1 year of that 102(b) event. Note that 102(b) does not contain the phrase by others as in 102(a). Thus if an applicant publishes her own invention more than 1 year before filing the application for patent, she will be barred by 102(b) from being eligible to be granted a patent in the United States. Likewise, if a 102(b) event by another occurs, apatent applicant in the United States will not be able to antedate the 102(b) event. 

As a general matter, the 102 sections listed in this chapter may be applied to show that a later filed patent application lacks novelty, is obvious, or both. A rejection of patentability under one or more of the 102 sections alleging that the claimed invention is not novel is usually referred to simply as a 102 rejection, referenced to whatever sections the prior art belongs to. For example, if a prior art nonpatent publication by another more than 1 year before the application in question was alleged to defeat the novelty of the applicant s claimed invention then a rejection under 102(b) could be brought this would be called 102(b) rejection for lack of novelty.42 For a rejection to be made solely upon a 102 reference, a single prior art reference must disclose every element of the patent application claim. If a combination of multiple prior art references is needed to disclose the entirety of the invention, this cannot be the basis for a novelty rejection. However, multiple references may be used to reject a patent application claim as being obvious —that is, the invention may be technically novel, but still not patentable. 

Rejections alleging nonpatentability due to obviousness are referred to as 103 rejections and will be discussed extensively in Chapter 8. The general rule is that rejections made under 103 will rely on the same prior art references as do 102 novelty rejections, with a couple of narrow but important exceptions. Section 103 is composed of sections (a), (b), and (c) but most obviousness rejections pertaining to chemical cases are made under section (a), which states the statutory definition of obviousness.43 In regard to our discussion of prior art, the narrow and important exceptions to this prior art rule fall under section (c)(1) and (c)(2) ... 

To discuss the impact of these potential prior art references, it will be helpful to have the most relevant dates for our chemist s invention conveniently listed as in Table 3.1. 

TABLE 3.1 The Relevant Dates Needed to Determine the Impact of Prior Art References on the Patent Application Filing... 

Finally, in order for the prior art reference to anticipate a later claimed invention, the prior art reference must be enabled. This requirement stipulates that one of ordinary skill in the art must be able to make and use the anticipating teachings in the prior art reference without resorting to undue experimentation. Something described in the prior art is not really described if one of ordinary skill cannot actually put the described thing together. The linchpin of the analysis turns on whether the allegedly... 

Several prior art references with effective dates before our chemist s invention are available for examination against the invention described in claim 1 above. The pertinent details of each reference are ... 

TABLE 7.1 Comparison of Pigments and Additives in the Claimed Composition and in the Prior Art References... 

Let s next compare each of the possible prior art references to the claimed composition as shown in Table 7.1. 

Prior art reference 4 contains each and every element (and only each and every element) of the claimed composition and so appears to anticipate the later claimed invention. If we ve read carefully, however, we realize that prior art reference 4 does not describe the preparation of any of the required elements. A prior art reference cannot anticipate that which is not enabled. Is prior art reference 4 enabled Notice that the question is directed to whether the reference is enabled and not whether the reference is by itself enabled. Even though reference 4 does not enable the preparation of the required pigments and additives, those preparations are within the skill of one of... 

In the example just discussed, the comparisons made were relatively straightforward in that each reference disclosed a composition, so it was just a matter of comparing the prior art compositions to the claim as constructed. Sometimes the prior art is not so accommodating in the sense that prior art references often disclose a lot of information and a single prior art reference may contain each and every element of a later claimed invention, but it may not do so in a way that anticipates a later claimed invention. For example, consider the following prior art reference in view of the earlier claimed invention. 

An anticipatory prior art reference must be enabled as of the date of the applicant s invention. In this example, all of the references were in existence before the chemist s discovery. However, patent prosecution can sometimes take a long time so that a prior art reference that was not enabled when the invention was discovered may be enabled by the time the claims get examined, this is more likely in fast-moving biotech areas. For purposes of the claim examination in this context, the date of the invention is the date that needs to be considered. 

In the course of examining the patent application, the patent examiner at the USPTO cites three prior art references with reference dates before the chemist s invention date, and he alleges that each of them anticipate the claimed gas chromatograph. The key features of the three references that the examiner has cited are explained as follows ... 

Can you guess which, if any, of these three prior art references would anticipate the claim to the gas chromatograph given in claim 1 ... 

Reference B discloses the preparation of compound A. Notice that the prior art reference B anticipates claim 1 since it discloses compound A, and it anticipates claim... 

A prior art reference will anticipate a later claimed invention where that prior art reference contains each and every element and limitation of the claimed invention. However, there are situations where the prior art does not specifically disclose an element or limitation but will still be treated, for purposes of defeating the novelty of a later claimed invention as if it had. Elements that are not disclosed explicitly but that are always and necessarily present in the prior art reference are deemed inherent... 

A prior art reference was cited that disclosed, among other compounds, the exact compound of formula I. However, the reference made no mention that the compound was suitable for the production of polymers. Given the failure of the prior art to teach the suitability for polymer production limitation, does the prior art reference disclose each and every element and limitation as required in order for it to be an anticipating reference The short answer is yes. The reason for this is that a molecule and its properties are presumed to be inseparable.35 Thus the suitability of the compound... 

This case was on appeal from the USPTO, which denied patentability, asserting obviousness in view of two prior art references. The first prior art reference described how to make high-purity maltose, and the second prior art reference described using... 

Likewise, in In re Mlot-Fijalkowski, the CCPA upheld the Board s rejection of the applicant s claimed invention as unpatentable for obviousness.13 The applicant s claimed invention involved the use of penetrating dyes for the detection of surface imperfections, where the penetrating dye included a substance that undergoes a color change when treated with a developer. Two of the cited prior art references (Skelly and Vincent) described the use of color formers or dye intermediates with clay developer particles, but did not disclose the use of such dyes for the imagining of surface... 

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