Monday, December 15, 2014

Anticipation is not the epitome of obviousness

Within a PTAB decision from 2013, one has the text

The same issues are dispositive of each obviousness rejection on appeal. First, each of the rejections for obviousness relies on the Examiner‟s
finding that Surjadi, as evidence by Stammer, identically discloses the apparatus of claim 36. “It is well settled that „anticipation is the epitome of obviousness.‟” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Accordingly, Surjadi also renders claim 36 obvious. Claims 37-69 fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii).

See IPBiz post "Anticipation is the epitome of obviousness"?

from COHESIVE TECHNOLOGIES v. WATERS, 543 F.3d 1351 (CAFC 2008) :

Despite the often quoted maxim that anticipation is the
"epitome of obviousness,"
In re Kalm, 378 F.2d 959, 962, 54 C.C.P.A. 1466 (CCPA
1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103
are separate conditions of patentability and therefore separate defenses
available in an infringement action. See 35 U.S.C. § 282 (2000); Jones v. Hardy,
727 F.2d 1524, 1529 (Fed. Cir. 1984) ("[T]hough anticipation is the epitome of
obviousness, [they] are separate and distinct concepts."); see also Mendenhall
v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) [p. 1364] (holding that
verdict of nonobviousness was not inconsistent with verdict of anticipation by
prior public use, despite "legal homily" that anticipation is the epitome of
; In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (holding that
rejection under § 102 was new ground following previous rejection under § 103,
despite maxim that "anticipation is the epitome of 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


This is precisely why our precedent has rejected reliance on the "legal homily"
that "anticipation is the epitome of obviousness." Mendenhall, 5 F.3d at 1563.

We have expressly upheld a jury verdict of anticipation under § 102(b),
even when the same jury found the patent nonobvious under § 103. Id. Though the
dissent argues that a "long line of precedent" supports its argument that every
anticipated claim is obvious, not a single one of the cases it cites actually
holds that the "epitome" maxim precludes a jury from finding a patent invalid
under § 102, simply because it is nonobvious under § 103.

See earlier IPBiz post: PTAB repeats “anticipation is the epitome of obviousness.”


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