Friday, December 20, 2013

PTAB repeats “anticipation is the epitome of obviousness.”

from Ex parte O’SULLIVAN

Accordingly, Doss satisfies all of the limitations of claim 12. The Examiner’s conclusion that Doss renders obvious the subject matter of claim 12 thus is correct. It is well settled that “anticipation is the epitome of obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002)(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).

As a separate matter:

The conclusion that the subject matter of dependent claims 4, 5, 11, 12, 14, and 15, supra, would have been obvious necessarily is also a conclusion that the subject matter of independent claims 1, 8, and 13, from which claims 4, 5, 11, 12, 14, and 15 depend, would have been obvious. See Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been obvious, the broader claims . . . must also have been obvious”).

**Of anticipation and obviousness, from PatentHawk on October 9, 2008: Anticipation Without Obviousness

While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) ("Succinctly put, the various unenforceability and invalidity defenses that may be raised by a defendant--inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103--require different elements of proof.") Obviousness can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference. Compare MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) ("To anticipate, a single reference must teach every limitation of the claimed invention."), with Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991) ("If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness."). Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp., 767 F.2d 853, 857 (Fed. Cir. 1985) ("In a § 103 obviousness analysis, Graham [v. John Deere Co., 383 U.S. 1 (1966)] requires that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) the so-called 'secondary considerations.'"), with Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) ("'Anticipation' means that the claimed invention was previously known, and that all of the elements and limitations of the claim are described in a single prior art reference."). And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) ("[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency."); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) ("[O]bviousness is not inherent anticipation."). Thus, "it does not follow that every technically anticipated invention would also have been obvious." In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).2

2 The dissent claims categorically that "every anticipated claim is obvious." Post at 3. But this is not correct. Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention--there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.

[LBE has also written on this topic.]


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