Tools for Fighting a 102 Anticipation Rejection

Written by: Mark Terry

Today I came across a nice little Board of Patent Appeals case that outlines an additional tool that can be used to fight 102 anticipation rejections, especially when procuring software patents. Specifically, this case addresses a common situation: you receive a 102 rejection where the Examiner appears to have done a simple text search for each of your claim elements and found them all in disparate parts of one reference.

The case of Ex parte Putnam (Appeal No. 2010-001668) involved a software process for migrating databases. The Patent Examiner found all of the elements of claim 1 in one patent reference. The elements, however, were not arranged the same way as claimed by the Appellant. I see this a lot in the software art – Examiners will find one huge prior art patent, and cherry pick places in the reference that describe the steps that your claimed invention takes. Apparently, this does not meet the Examiner’s burden under § 102.

The Board decided:

“To anticipate under § 102, the prior art reference ‘must not only disclose all elements within the four corners of the document but must also disclose those elements arranged as in the claim.‘ Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). “Thus, it 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.” Id. at 1371.

Lesson Learned: When you receive an anticipation rejection under § 102, it’s not enough that the Examiner found all of your claim elements in one reference. Review the reference carefully to make sure that the claim elements (as pointed out by the Examiner) are arranged the same way as in your claim. If they are not, then you may have a case for reversal of the Examiner’s rejection.

This case also highlights the importance of writing your claims (especially in software cases) in such a way that your claim elements are linked or related. This further emphasizes the duty of the Examiner to show the link between the claim elements, as claimed by the Appellant. For example: reading data X; executing a digital signal process using data X; displaying the result of the digital signal process.

Mark Terry is a Board-Certified patent attorney, and former Patent Examiner, residing in the City of Miami, with a legal practice that focuses on obtaining business method and software patents for his clients.


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