ANTICIPATION BY INHERENCY IN PRIOR ART

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ANTICIPATION BY INHERENCY IN PRIOR ART

• James O. Wilson
• Supervisory Patent Examiner
• Technology Center 1600
• USPTO
• [phone]
• James.Wilson_at_uspto.gov

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REQUIREMENTS OF ANTICIPATION

• In order for a claimed invention to be
  anticipated under 35 U.S.C. 102(b), all of the
  elements of the claim must be found in one
  reference. See Scripps Clinic Research Found.
  v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d
  1001, 1010 (Fed. Cir. 1991).

• A claim is anticipated only if 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.v.
  Union Oil Co. of California, 814 F.2d 628, 631, 2
  USPQ2d 1051, 1053 (Fed. Cir.1987).

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EXAMINERS BURDEN

• The examiner has the initial burden of
  establishing a prima facie case of anticipation
  by pointing out where all of the claim
  limitations appear in a single reference. See In
  re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655
  (Fed. Cir. 1990). In re King, 801 F.2d 1324, 231
  USPQ 136 (Fed. Cir. 1986).

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35 USC 102 Multiple References May be Used

• MPEP 2132.01 Multiple References 35 U.S.C. 102
  
• Rejections
• Normally, only one reference should be used
  in making a rejection under 35 USC 102. However,
  a 35 U.S.C. 102 rejection over multiple
  references has been held to be proper when extra
  references are cited to
• (A) Prove the primary reference
  contains an enabling disclosure
• (B) Explain the meaning of a term
  used in the primary reference
• or
• (C) Show that a characteristic not
  disclosed in the reference is
• inherent

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Additional Reference
To Prove Anticipatory Reference
contains an enabling disclosure.

• In re Donohue, 766 F.2d 531, 226 USPQ 619
  (Fed Cir. 1985).
• Compound claims were rejected under 35 USC
  102(b) over a publication in view of two patents.
  The publication disclosed the compounds. The
  patents taught the skilled artisan how to prepare
  general class of compounds. Applicants argued no
  motivation to combine. Court held that the
  publication taught all of the elements and no
  motivation to combine was necessary. The
  patents were cited to show that the ability to
  make the claimed compounds were in the publics
  possession before applicants invention.

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Additional Reference To Explain Meaning of
Terminology

• In re Baxter Travenol Labs., 952 F.2d 388,
  21 USPQ2d 1281 (Fed. Cir. 1991).
• Claims directed to a blood bag system with a
  bag containing DHEP. Claims rejected over a
  technical progress report which taught the same
  blood bag system excluding a DHEP containing bag.
  The technical report disclosed commercially
  available bags could be used in blood bag system.
  Extrinsic evidence (depositions, declarations,
  Applicants admissions) showed commercially
  available DHEP containing blood bags at time the
  technical report was written. Since commercial
  bags included bags containing DHEP, the claims
  were held anticipated.

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Additional Reference to prove an undisclosed
characteristic is inherent

• Atlas Power Co. v. IRECO, Inc., 190 F.3d 1342,
  1349, 51 USPQ 1943, 1948 (Fed. Cir 1990) .
• Extrinsic evidence may be used when a
  reference is silent about an asserted inherent
  characteristic. Such evidence must make clear
  that the missing descriptive matter is
  necessarily present in the thing described in the
  reference and that it would be recognized by a
  skilled artisan. As long as there is evidence of
  record establishing inherency, failure to
  contemporaneously recognize an inherent property,
  function or ingredient of the prior art does not
  preclude a finding of anticipation.

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Old things not patentable upon disclosure of a
new property, use, function

• Merely claiming a new use, a new function or
  an unknown (new) property which is necessarily
  present in the prior art does not necessarily
  make the claim patentable.
• See In re Best, 562 F.2d 1252, 1254, 195 USPQ
  430, 433 (CCPA 1977). In re Schreiber, 128 F.3d
  1473, 44 USPQ2d 1429 (Fed. Cir. 1997).

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Examiners Burden to Establish Anticipation by
Inherency

• To establish inherency the extrinsic evidence
  must make clear that the missing descriptive
  matter is necessarily present in the thing
  described in the alleged anticipatory reference.
• 2. The examiner must provide a basis in fact
  and/or technical reasoning to reasonably support
  the determination that the alleged inherent
  characteristic necessarily flows from the
  teachings of the applied prior art.

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Anticipation by Inherency of Composition
Product and Apparatus Claims

• Titanium Metals Corp. v. Banner. 778 F.2d
• 775, 227 USPQ 773.
• Where the claimed products and the prior art
  products are identical in structure or
  composition or are produced by identical
  processes, a prima facie case of anticipation
• is established.

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Composition is physically the same, it must
have the same properties

• If prior art teaches the identical chemical
  structure, the properties applicant discloses
  and/or claims are necessarily present. Products
  of identical composition cannot have mutually
  exclusive properties. A chemical compound and its
  properties are inseparable. In re Spada, 911
  F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.
  1990)

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Non-functional printed matter does not
distinguish claimed product from otherwise
identical prior art product to obviate
anticipation

• Where the only difference between a prior art
  product and a claimed product is printed matter
  (i.e. instructions), which is not functionally
  related to the product, the content of the
  printed matter will not distinguish the claimed
  product from the prior art. In re Ngai 70 USPQ2d
  1862 (CAFC 2004) and In re Gulack, 703 F.2d
  1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir.
  1983).

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Product-by-process claims not limited to the
manipulations of the recited steps , only the
structure implied by the steps

• Determination of the patentability of a
  product-by-process claim is based on the identity
  of the product, not its method of production. If
  the product in the product-by-process claim is
  the same (or obvious) from a product of the prior
  art, the claim is unpatentable, even if the
  product was made by a different process. In re
  Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966
  (Fed. Cir. 1985). When assessing patentability,
  the product-by-process claim has potential
  patentability when the manufacturing steps impart
  identifiable, distinctive structural
  characteristic to the final product.

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Anticipation by Inherency PROCESS CLAIMSClaims
Anticipated when a Device carries out Process

• A Prior art device may anticipate a claimed
  process if the device carries out the process
  during normal operation. When the prior art
  device is the same as a device described in the
  specification for carrying out the claimed
  method, it can be assumed the device will
  inherently perform the claimed process. In re
  King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir.
  1986).

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Anticipation by Inherency PROCESS CLAIMSClaims
drawn to use of old composition directed to known
result or property are anticipated

• Use of an old composition or structure
  directed to a result or property disclosed in the
  art are which logically flows from the use as
  disclosed in the art anticipates claims drawn to
  said use. In re May, 574 F.2d 1082, 1090, 197
  USPQ 601, 607 (CCPA 1978).

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Additional Cases of Interest
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Inherent Characteristics

• In re Cruciferous Sprout Litigation, 301 F.3d
  1343, 64 USPQ 2d 1202 (Fed. Cir. 2002).

• Brassica recognized that some sprouts are rich
  in glucosinolates and high in
• Phase 2 enzyme-inducing
• activity. But these activities have existed as
  long as sprouts themselves. The prior art teaches
  sprouting and harvesting the very same seeds that
  the patents recognize as producing sprouts rich
  in glucosinolates and having high Phase 2
  enzyme-inducing potential.

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Inherent Result

• Schering Corp. v. Geneva Pharmaceuticals Inc.,
  67 USPQ2d 1664 (CA FC 2003)
• Prior patent need only describe how to make
  DCL in any form encompassed by compound claim
  covering DCL.

• Prior patent for antihistamine loratadine
  is anticipatory prior art reference to patent
  covering metabolite of loratadine called
  descarboethoxyloratadine or DCL, since prior
  patent discloses administering loratadine to
  patient, and since inherent result of
  administering loratadine to patient is formation
  of DCL.

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Anticipated or Obvious.?

• Smithkline Beecham Corporation and Beecham Group,
  P.L.C. v. Apotex Corp., Apotex, Inc., and
  Torpharm, Inc.
• 70 USPQ2d 1737 (CA FC 2004) .

• Prior art related to paroxetine formulations
  prepared by a process without water, thereby
  overcoming a pink hue discolouration problem
  some paroxetine tablets developed. Dry
  granulation method disclosed in the prior art led
  to the finding of anticipation.

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Thank You

• James O.Wilson
• Supervisory Patent Examiner
• Technology Center 1600
• USPTO
• [phone]
• James.Wilson_at_uspto.gov