2141.01 Scope and Content of the Prior Art [R-07.2022]

Created On
byChhabra Law Firm

[Editor Note: This MPEP section is applicable to all applications. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is “before the effective filing date of the claimed invention”. For applications subject to pre-AIA 35 U.S.C. 102, the relevant time is “at the time of the invention”. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005). See also MPEP § 2150 et seq. Many of the court decisions discussed in this section involved applications or patents subject to pre-AIA 35 U.S.C. 102. These court decisions may be applicable to applications and patents subject to AIA 35 U.S.C. 102 but the relevant time is before the effective filing date of the claimed invention and not at the time of the invention.]

I. PRIOR ART AVAILABLE UNDER 35 U.S.C. 102 IS AVAILABLE UNDER 35 U.S.C. 103

“Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Subject matter that is prior art under 35 U.S.C. 102 can be used to support a rejection under section 103. Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter. 1981) (“it appears to us that the commentator [of 35 U.S.C.A.] and the [congressional] committee viewed section 103 as including all of the various bars to a patent as set forth in section 102.”).

Furthermore, admitted prior art can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). See MPEP § 2129 for discussion of admissions as prior art.

An obviousness rejection is ordinarily based on a disclosure that qualifies as prior art under 35 U.S.C. 102 or pre-AIA 35 U.S.C. 102. If it is established that a disclosure does not qualify as prior art under an appropriate section of 35 U.S.C. 102, then the disclosure is also not prior art that can be used in an obviousness rejection. For instance, for a claimed invention subject to 35 U.S.C. 102, a 35 U.S.C. 102(a)(2) reference used in an anticipation rejection but overcome by submitting a declaration under 37 CFR 1.130(a) cannot be used in an obviousness rejection. Likewise, for a claimed invention subject to pre-AIA 35 U.S.C. 102, a pre-AIA 35 U.S.C. 102(a) reference used in an anticipation rejection but overcome by submitting a declaration under 37 CFR 1.131 cannot be used in an obviousness rejection.

For an overview of what constitutes prior art under 35 U.S.C. 102, see MPEP § 901 – § 901.06(d), § 2121 – § 2129 and § 2151 – § 2155.

II. SUBSTANTIVE CONTENT OF THE PRIOR ART

See MPEP § 2121 – § 2129 for case law relating to the substantive content of the prior art (e.g., availability of inoperative devices, extent to which prior art must be enabling, broad disclosure rather than preferred embodiments, admissions, etc.).

III. CONTENT OF THE PRIOR ART IS DETERMINED AT THE RELEVANT TIME TO AVOID HINDSIGHT

The pre-AIA 35 U.S.C. 103(a) requirement “at the time the invention was made” is to avoid impermissible hindsight. Likewise, the AIA 35 U.S.C. 103 requirement “before the effective filing date of the claimed invention” serves the same purpose. See MPEP § 2145, subsection X.A. for a discussion of rebutting applicants’ arguments that a rejection is based on hindsight.

“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art. …” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).

IV. PRE-AIA 35 U.S.C. 103(c) COMMON OWNERSHIP— REQUIRED FOR THE CONDITIONS OF PRE-AIA 35 U.S.C. 103(c)

An applicant subject to pre-AIA 35 U.S.C. 102 who wants to avail himself or herself of the benefits of pre-AIA 35 U.S.C. 103(c) has the burden of establishing that subject matter which only qualifies as prior art under subsection (e), (f) or (g) of pre-AIA 35 U.S.C. 102 used in a rejection under pre-AIA 35 U.S.C. 103(a) and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. Likewise, an applicant who wants to avail himself or herself of the benefits of the joint research provisions of pre-AIA 35 U.S.C. 103(c) (for applications pending on or after December 10, 2004) has the burden of establishing that:

  • (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
  • (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
  • (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

This prior art disqualification is only applicable for subject matter which only qualifies as prior art under subsection (e), (f) or (g) of pre-AIA 35 U.S.C. 102 used in a rejection under pre-AIA 35 U.S.C. 103(a).

Note that for applications filed prior to November 29, 1999, and granted as patents prior to December 10, 2004, pre-AIA 35 U.S.C. 103(c) is limited on its face to subject matter developed by another person which qualifies as prior art only under subsection (f) or (g) of pre-AIA 35 U.S.C. 102. See MPEP § 2146.01. See also In re Bartfeld, 925 F.2d 1450, 1453-54, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991) (Applicant attempted to overcome a pre-AIA 35 U.S.C. 102(e)/103 rejection with a terminal disclaimer by alleging that the public policy intent of pre-AIA 35 U.S.C 103(c) was to prohibit the use of “secret” prior art in obviousness determinations. The court rejected this argument, holding “We may not disregard the unambiguous exclusion of § 102(e) from the statute’s purview.”).

See MPEP § 2146.02 for the requirements which must be met to establish common ownership or a joint research agreement.