On the vitality of In re Nomiya as to admissions
Note the law review article titled -- The Past and Future of Admitted Prior Art --, 21 Tex. Intell. Prop. L.J. 237, which observes about Nomiya:
Admissions in the specification may be made in any section of the specification. n42 Admissions in the background section, however, are the most [p. 242] common. n43 Non-reference admitted prior art is unique because there is no source for the prior art beyond the admission itself. n44 As illustration, consider In re Nomiya. In Nomiya, the applicant labeled two figures in the specification as "Prior Art." n45 These figures were not from a patent or published source. The figures existed solely in the applicant's specification. Yet the court held that the admission proved the applicants knew about the information in the figures prior to the inventive process. n46 The court therefore held the two figures were admitted prior art. n47
An applicant's own work, however, may be disqualified as admitted prior art. n48 Non-reference admissions may sometimes mingle genuine prior art and the applicant's own work. Nomiya teaches that in such a case it is "necessary to consider everything appellants have said about what is prior art to determine the exact scope of their admission." n49 In Nomiya, the court determined that dotted lines within the two figures represented the applicant's own improvements to the prior art. n50 The court therefore held that the dotted lines in the figures were not admitted prior art. n51
Another limitation is that a Jepson preamble is only implied admitted prior art. n52 The presumption that a Jepson preamble is admitted prior art may be rebutted. n53 The specification is consulted to determine how much, if any, of the preamble should be admitted as prior art. n54 For example, in In re Ehrreich, n55 the court reversed an initial finding that a claim preamble was admitted prior art. n56 The court held that the form of the claim was designed "to avoid a double patenting rejection." n57 As such, the court held that the applicant had not intended to admit the preamble as prior art. n58
n9. In re Nomiya, 509 F.2d 566, 571 (C.C.P.A. 1975).
n24. See In re Nomiya, 509 F.2d 566, 570-71 (C.C.P.A. 1975) ("We see no reason why appellants' representations in their application should not be accepted at face value as admissions that ... may be considered "prior art' for any purpose ... .").
n97. Aktiebolaget Karlstads Mekaniska Werkstad v. U.S. Int'l Trade Comm'n, 705 F.2d 1565, 1574 (Fed. Cir. 1983) ("The parties agree that there has been an admission, but disagree over what has been admitted.").
n98. See id. (discussing statements made to the Patent Office during prosecution, not the text of the specification and citing In re Nomiya, 509 F.2d 566, 571 (C.C.P.A. 1975), which applied the same standard to the scope of an admission in a figure, and so Aktiebolaget applies to non-reference admitted prior art).
See also Burke, The Prior Art By Admission Doctrine: Judicially Created Private Prior Art , 13 Fed. Cir. B.J. 607
As stated in In re Nomiya, n79 discussed infra Part I.C, admitted prior art can be used for any purpose regardless of whether a statutory basis exists under § 102. n80 The Federal Circuit has embraced the broader interpretation of this premise: admitted prior art can be used for both anticipation and obviousness determinations, regardless of statutory basis under § 102. n81
***But separately note from an IPBiz post in January 2013:
Note from stratfordpub Obviousness Standard for Patents [by Paul Davis, Scott Szala] :
the AIA legislatively overrules the Nomiya line of cases, wherein admissions can make prior art out of non‐prior art. See In re Nomiya, 509 F.2d 566, 571 (CCPA 1975). Thus, admissions should remain as non‐statutory prior art.
link to IPBiz post: http://ipbiz.blogspot.com/2013/01/on-including-prior-art-in-patent.html
IPBiz post 10159