Later published papers reflecting earlier state of the art

From Kador and Partners

In the intermediate decision under appeal, the Op-
position Division had refused to consider the con-
tent of five documents, which had been filed and
their relevance substantiated in due time, for the
sole reason that they were published after the prior-
ity date of the patent. The Board now ruled that
such a purely formal approach relying entirely on
the publication date of a document as the decisive
criterion for its admittance
into the proceedings is
not appropriate. The Board summarized its view in
the headnotes of the decision:

I. When evaluating evidence relating to the issues
of novelty and inventive step, it is necessary to
distinguish between a document, which is alleged
to be part of the
state of the art
within the meaning
of Article 54(2) EPC – in the sense that the docu-
ment itself is alleged to represent an instance of
what has been made available to the public before
the priority date of the opposed patent –
and a document which is not itself part of the state of the
art, but which is submitted as evidence of the state
of the art or in substantiation of any other allegation
of fact relevant to issues of novelty and inventive
step.



Separately, from MPEP 2164.05(a) :


In general, the examiner should not use post-filing date references to demonstrate that the patent is non-enabling. Exceptions to this rule could occur if a later-dated reference provides evidence of what one skilled in the art would have known on or before the effective filing date of the patent application. In re Hogan, 559 F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977).


Separately, from GPO on AIA


MPEP Sec. 2124 indicates that documents published after
the effective filing date may be used to show factual evidence
regarding the factors needed to establish that undue experimentation
would have been needed to make and use the invention. A document under
AIA 35 U.S.C. 102(a)(2) by its very nature meets this criteria, i.e.,
it is a publication after the critical date which can be used as
evidence to support a lack of enablement rejection by providing facts
relevant to the weighing of the Wands factors \38\ to support a 35
U.S.C. 112(a) lack of enablement rejection.



From law.washington.edu


It is proper to use later publi-
cations to prove the state of the art that existed on
the effective filing date. However, it is improper to
use later publications “disclosing a later existing state
of art in testing an earlier application for compliance
with §112, first paragraph,” that did not exist on the
filing date.

Because the District Court had used
the post-1987 references to determine whether
monocots were transformable in 1987 without un-
due experimentation, and not to show that the un-
claimed monocots could be transformed in 1990,
the Federal Circuit found that the District Court
had not erred in relying on these post-dated refer-
ences for their decision.

[discussing Post Genetic Systems v. DeKalb,
315 F.3d 1335, 1341 (CAFC 2003)]



See also In re Wright, 999 F.2d 1557 :

In the present case, the PTO set forth a reasonable basis for finding that the scope of the appealed claims is not enabled by the general description and the single working example in the specification. Consequently, the burden shifted to Wright to present persuasive arguments, supported by suitable proofs where necessary, that the appealed claims are truly enabled. Wright failed to meet this burden. (...)

The Matthews et al. article, published approximately 5 years after the effective filing date of Wright's application, adequately supports the Examiner's and the Board's position that, in February of 1983, the physiological activity of RNA viruses was sufficiently unpredictable that Wright's success in developing his specific avian recombinant virus vaccine would not have led one of ordinary skill in the art to believe reasonably that all living organisms could be immunized against infection by any pathogenic RNA virus by inoculating them with a live virus containing the antigenic code but not the pathogenic code of that RNA virus.