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 Ex Parte Farkas, the PTAB reversed an
Examiner’s anticipation rejection based on the following main reasons:
- Concepts do not anticipate
- Missing element by element analysis
- Elements not arranged in the same way
We explain each one below.
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:
An 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 grounds 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 grounds 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.