Novelty Requirement

Anticipation Standard

• A patent claim is anticipated when a single prior art reference discloses EVERY element of the claim
• ALL claim elements must appear in the single reference to establish anticipation
• If even one element is absent from the reference, anticipation fails

Single Reference Rule

• Multiple references CANNOT be combined to establish anticipation
• Combining two references to show all elements = obviousness (§ 103), not novelty (§ 102)
• This is the fundamental distinction between novelty and obviousness

Inherent Anticipation

• Anticipation can be established based on inherent features — elements necessarily present in the prior art even if not explicitly described
• If practicing the prior art reference necessarily produces the claimed result, the result is inherently anticipated
• Standard Oil Co. v. American Cyanamid (Fed. Cir. 1985): the prior art reference need not disclose the inherent characteristic explicitly

Enablement

• To anticipate, the prior art reference must ENABLE the claimed invention
• A prior art reference that merely mentions the invention without enabling a person of ordinary skill to practice it does not anticipate
• Contrast with written description (the prior art must disclose and enable, not just describe in general terms)

Same Claim Construction

• The same claim construction applied to assess infringement is applied to assess anticipation
• 'what infringes if later, anticipates if earlier' (Knapp v. Morss, 1889).

Effective Date of Prior Art

• A printed publication's prior art date = date of public accessibility
• A patent's prior art date = its filing date (for § 102(a)(2)) or issue date (for § 102(a)(1))
• AIA § 102(a)(2): US patents and published applications are prior art as of their FILING DATE if they name a different inventor and are later published/issued
• GRACE PERIOD EXCEPTION (§ 102(b)(1)): disclosures within 1 year before EFD are not prior art if: (a) made by the inventor
• (b) made after the inventor's own disclosure

Note

• Prior-AIA prior art included foreign patents and printed publications as of FOREIGN FILING DATE (not US filing date)
• AIA changed this for § 102(a)(2).

Step 1 — Claim Construction

• Construe each claim element using the appropriate standard
• USPTO examination: broadest reasonable interpretation (BRI) — gives claim language the widest reasonable meaning in light of the specification
• Litigation: Phillips standard — the meaning a POSITA would give in context of the patent specification and prosecution history

Step 2 — Element-by-element Comparison

• For each element of the claim, identify whether the prior art reference discloses that element
• The prior art must disclose each element: explicitly (directly stated) or inherently (necessarily present)
• Arranged or combined in the same way as the claim

Claim Chart

• A claim chart maps each claim element to the corresponding disclosure in the prior art reference
• Each row = one claim element
• The chart must show where in the reference each element is found

Implicit Disclosures

• Elements not explicitly stated but necessarily inherent in the reference are considered disclosed
• Example: a reference to 'water' necessarily discloses H2O even if the formula is not stated

Range Claims

• A prior art reference that discloses a point within a claimed range anticipates the range claim
• A prior art range that overlaps a claimed range does not necessarily anticipate (depends on whether the specific point within the overlap is necessarily included in both)
• Titanium Metals Corp. v. Banner (Fed. Cir. 1985): prior art range must overlap to anticipate
• CAS v. Metabolite (Fed. Cir.): inherent anticipation when the process necessarily produces the claimed result

Person of Ordinary Skill in the Art (POSITA)

• The anticipation analysis assumes the reader is a POSITA
• The POSITA understands the normal meaning of terms and recognized abbreviations in the field.

Pre-aia § 102

• First-to-invent system: a prior art reference could be antedated (swearing behind) if the inventor showed an earlier invention date
• Prior art was based on domestic activities (patents, printed publications, public use, sales in the US) plus foreign patents and publications

AIA § 102

• First-inventor-to-file system: prior art is based on filing date, not invention date
• Antedating (swearing behind) is no longer available
• What matters is the effective filing date (EFD) of the application

Worldwide Prior Art

• AIA includes any public disclosure anywhere in the world as prior art (no geographic limitation)
• Pre-AIA was limited to US for public use and on-sale activities

Transition Applications

• Applications with any claim having a pre-AIA § 120/365 priority date earlier than March 16, 2013 = examined under pre-AIA
• Applications with all claims having an EFD on or after March 16, 2013 = examined under AIA
• 'mixed' applications with pre-AIA and post-AIA claims = complex analysis
• AIA GRACE PERIOD vs.

Pre-aia

• Pre-AIA § 102(b): 1-year grace period from the date of patent/publication/public use/on-sale event (anywhere)
• AIA § 102(b)(1): grace period only for INVENTOR'S OWN disclosures + third-party disclosures after inventor's own
• More restricted than pre-AIA but covers worldwide activities

Practical Change

• A US-only company operating before AIA could use US public use dates against prior art
• Under AIA, only publication dates matter for non-US prior art.

Strategy 1 — Argue the Reference Does not Disclose an Element

• The most powerful argument: identify a claim element that is completely absent from the reference
• Cite the specific claim language and the specific disclosure (or absence) in the reference
• Provide detailed explanation of why the reference does not implicitly or inherently disclose the element

Strategy 2 — Argue Inherency

• Rebut examiner's claim that an element is inherent
• To establish inherency, the prior art must NECESSARILY produce the element — not just probably or possibly
• If the prior art could produce the element or could not, depending on conditions, there is no inherency

Strategy 3 — Claim Construction Argument

• Argue the examiner has misconstrued a claim element
• Narrow the interpretation to exclude the prior art
• Be careful: narrow construction during prosecution creates prosecution history estoppel

Strategy 4 — Claim Amendment

• Add a limitation that distinguishes the reference
• Add an element from the dependent claims (which may not appear in the reference)
• Narrow an existing element to exclude the prior art disclosure

Strategy 5 — Argue the Reference is not Prior Art

• Show the reference is within the grace period (inventor's own disclosure within 1 year)
• Show the reference was made after the effective filing date
• Show the reference was not publicly available on the date relied upon

Examiner Interview

• Request an examiner interview to discuss the rejection
• Propose specific claim language
• Real-time feedback is valuable

Response to Obviousness Follow-up

• If § 102 is overcome, the examiner may issue a § 103 obviousness rejection combining the reference with another
• Prepare for this possibility in the § 102 response.