Friday, January 18, 2013

On including prior art in a patent specification

Ex parte Dacosta includes references to cases which might lead one not to include prior art in a background section.

HOWEVER, 102(b) prior art is usually readily identifiable, and admitting the obvious is not such a big deal. Making a clear distinction from prior art is usually helpful in moving prosecution along.

The cases

Constant v. Advanced Microdevices, 848 F.2d 1560, 1570 (CAFC 1988)

In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975)

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.

Separately, on a "noticed fact"

MPEP 2144.03(C)
37 CFR 1.111(b)


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