Posted Monday, February 13, 2012.

For a U.S. patent to issue, the subject matter claimed in the application for a patent must be new, useful, nonobvious, and put forth in an enabling disclosure in the patent application.

Patents only issue for inventions that are new. If there is a prior invention that is identical to the invention claimed, then the claimed invention is not new. As a part of the examination process, the USPTO performs a search to see whether the claimed invention existed prior to the filing of the application.

If the USPTO finds a previous invention that is identical to the claimed invention, the USPTO will issue an Office Action rejecting the claims as being “anticipated” by the previous invention. The Office Action will contain information that describes how to find the previous invention, so that the inventor and the inventor’s patent attorney or patent agent can look it over to decide whether they agree that a case of anticipation has really been established.

Frequently the information about the other invention will be contained in a prior patent application or prior patent, but not always. Even if the inventor of the previous invention did not apply for a patent, it still existed, which means that the new invention isn’t truly new.

Consequently, if an examiner doesn’t find the same invention in a prior patent or patent application, the examiner might do a plain old Google search looking for the invention. Therefore, the rejection might contain “references” (where references are the documentation of the prior invention) that include patent documents but also links to Internet pages, or journal articles, or books. (I know a former patent examiner who used the Bible as a reference in a patent claim rejection.)

In some instances, the reference cited by the examiner contains a description of an invention that doesn’t perfectly match up with the invention for which we’ve newly applied for a patent. The examiner may assert that the reference anticipates our invention, but upon looking over the reference and considering the differences between the reference and our invention, we might conclude that a case of anticipation has not really been made out by the examiner. To know for sure, however, we have to turn to the technical definition of anticipation.

Court decisions from the Court of Appeals for the Federal Circuit tell us that anticipation means “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., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2d 1051, 1053 (Fed.Cir.1987). The reference that purportedly anticipates the invention must have every single element of our patent claim, in the order in which the elements are arranged in our patent claim.

If there’s an express recitation of the elements in the reference, there’s not a whole lot of argument to be had. Fortunately, it is very unusual for two people to describe something exactly the same way, so express recitations of the same elements in the reference as are in the patent application are rare. In that instance, what the examiner is relying upon is that the subject matter is “inherently” described by the reference. In other words, the reference doesn’t expressly put forth a particular claim element, but that one reading the reference who had skill in the art would understand that the reference must necessarily include the element even though it is not expressly listed.

Let’s say we filed an application for an airplane, comprising an airframe and a structure for providing lift. The examiner rejects our claim, and provides a reference that discloses an airplane. The reference doesn’t expressly recite a structure for providing lift. However, one with skill in the art would likely recognize that a structure for providing lift must necessarily be present in an airplane, because without a way to generate lift it would be hard to characterize the invention as an airplane! Therefore, the lift-producing structure could be said to be inherently present, and the examiner’s case of anticipation would be reasonable.

But the fact that the element might be present is not enough for anticipation. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991). If one with skill in the art would recognize that the element wouldn’t have to be a necessary element of the reference, then a case of anticipation has not been made out by the examiner.

(Anticipation is one of the major rationales for rejections of patent claims by USPTO examiners. Another is obviousness. My colleague, Mike Cicero, has written a nice writeup on obviousness here.)

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