Written by Mark Terry
This is a great Patent Trial and Appeal Board (PTAB) decision that highlights in one, short decision the main arguments every patent practitioner should make when responding to a 35 U.S.C. §102 anticipation rejection. In today’s Ex Parte Farkas decision, the PTAB reversed an Examiner’s anticipation rejection based on the following main reasons:
do not anticipate
element by element analysis
not arranged in the same way
We explain each one
It is often the case that
when issuing a 35 U.S.C. §102 anticipation rejection, the Examiner
cannot find one or more of the claim elements in the cited reference, but
rather finds the general concept behind the claim element in the reference. For
example (and this is a real example I’ve encountered), the claim element may state
that software executes an if-then rule, and the Examiner, not
finding that exact claim element, instead points to a part of the cited
reference that makes a statement about the software ensuring that
requirements are fulfilled. Certainly, this is a similar general concept,
but it is not the same as the claim element – “software executes an if-then
rule.” That is an incorrect factual finding by the Patent Examiner, and it
should be challenged by the savvy patent practitioner.
This is exactly what happened
in the Ex Parte Farkas decision. The PTAB found that:
The Examiner’s rejections identify concepts
and principles regarding preferential assignment of the preferred link and a
database that relate to claim 26, but “‘[c]oncepts’ do
not anticipate.” Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082,
1101 (Fed. Cir. 1985); see also Net MoneyIn, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (2008) (“[i]t is not enough that the prior art reference
discloses part of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed invention.”)
Thus, the shrewd patent
practitioner should review each claim element supposedly found in the 35 U.S.C.
§102 reference and ask himself whether the Patent Examiner found the exact
claim element, or just the general concept. If it is the latter, then the
practitioner should challenge that incorrect factual finding and cite
the Panduit Corp. case.
Moving on to #2, it is
also often the case that an Examiner will cite a 35 U.S.C. §102 reference that
includes numerous, distinct teachings that a POSITA would allegedly combine to
find the claimed invention. Again, that is not a proper 102 rejection. It is
well known that a 102 rejection must include an element by element analysis
that clearly shows each claim element in the prior art reference. In this
thread, the PTAB found that:
anticipation rejection requires an element-by-element analysis
of each claim. See Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1374 (Fed. Cir. 2001).
The lesson learned here is
that the patent practitioner should review the 35 U.S.C. §102 rejection to make
sure that each claim element is analyzed and truly found in the prior art
reference. If this is not present in the rejection, then there is a legitimate
ground for a reversal at the PTAB.
Lastly, with regard to #3
above, the PTAB found that:
Further, an anticipation rejection must
establish that a reference not only discloses all elements of the claim within
the four corners of the document, but that the reference also discloses
those elements arranged as in the claim. Net MoneyIn, 545 F.3d at
1369. On this record, we find the Examiner has not met his burden in
establishing anticipation of claim 26 by Finn.
This illustrates that the
Examiner cannot simply do a text search for each claim element and then simply
point to each element in the prior art reference. Unfortunately, I see this a
lot. The Examiner must go further and ensure that the claim elements are
arranged the same way as in the Applicant’s claim. Again, if you see this sort
of reasoning in a 102 rejection, then there is a legitimate ground for a
reversal at the PTAB.
The patent attorneys
at The Plus IP Firm have experience in responding to 35 U.S.C.
§102 rejections and have obtained numerous U.S. Patents on
behalf of their clients. To schedule a free consultation with a patent attorney
with The Plus IP Firm, click here.