Naming the Rule: Anticipating the Patent

Prior to the America Invents Act of 2011 (AIA), prior art were either (1) prior in time to the invention and thus anticipated the invention (e.g., 102(a), (e), and (g)); or (2) more than one-year prior to the application filing date and thus raised a statutory bar (102(b)). Within this schema, the pre-AIA Section 102 included the title of “Novelty and Loss of Right” where novelty refers to anticipation and loss of right refers to the statutory bar.

The AIA totally rewrote Section 102 and eliminated the notion of anticipating the invention and also altered the notion of the statutory bar. The new rules focus instead on the effective filing date of the invention create what looks a lot like the statutory bar of 102(b) (except for automatic one-year grace period). The rule is not about absolute novelty in terms of invention-date (as that term has always been used in the US) but instead about filing of an application before prior art emerges. Although this seems to fit within what we used to call the statutory bar, Congress included “novelty” within the title of the new Section 102(a) and left-out loss of rights.

Although we understand how the statute is supposed to work, we’re left with the small matter of crystalizing the name for prior art that qualifies under post-AIA 102. It doesn’t necessarily anticipate the invention – and congress appeared intent on moving away from the passive loss-of-rights designation. We could spell-out “qualifies as prior art under Section 102”, but that’s not the kind of identifier that sticks. I propose using the middle ground of “anticipating the patent” or “anticipating the application,” depending upon whether a patent has yet issued. This proposal seems to fit within Congressional intent but also implicitly recognizes that we’re no longer concerned with the invention date but instead the key patent date (i.e., effective filing date). This approach seems to also roughly fits with the language used by European Courts that have long focused on filing dates. Overall, this is not a big deal, but it may end up being important to get the words right.

130 thoughts on “Naming the Rule: Anticipating the Patent

  1. 23

    Sorry pal, but again you are wrong – what part of “”I did not say that” did you not understand?

    You’ve jumped from “you seem to” after being told otherwise to “you have said.”

    And you think an explanation from me won’t go right over your head? You need someone to hold your hand through the basics, and that’s just not going to be me.

    As for Ned Heller – with all due politeness, Fu. If you think that I am not a patent attorney, and I run rings around your “knowledge” of patent law, how low does that make you? Criminy, I even remember you NOT knowing what the status of the Tafas case was – MONTHS after it was finalized.

    You are WAY too busy peddling your Ned-IMHO want-to-be law to bother with what the law REALLY is.

  2. 22

    Mr. Non-Oblivious, it is a waste of time talking with anon. He pretends to be a “patent” “attorney,” but he has said enough over the time I have been here for me to sincerely question whether he is either a patent agent or a patent attorney. He often makes gaffs on the basics that no one practicing patent law or even law could not possibly know.

  3. 21

    I see what you mean. “anon” might have had some interesting insight, like some aspect of 102/103 that isn’t likely to come up in practice.

  4. 20

    You are saying something easy and direct and wrong.
    In your post below, you criticize MaxDrei, saying “You want something to be labeled ‘prior art’ and then distinguish how that item may be used.” That is the actual structure of pre-AIA 102(e), (f), (g) and 103(c): The prior art defined in pre-AIA 102 could not be used in certain situations. Pre-AIA 103(c) said “subject matter… which qualifies as prior art only under… subsections e, f, g… shall not preclude patentability….”
    I am still wondering if anyone sees a world of prior art for AIA 102 that is not prior art for AIA 103, or vice-versa.

  5. 19

    …additionally, your alternative explanation misses an important nuance. You want something to be labeled “prior art” and then distinguish how that item may be used, which arrives at the same end as whether or not that item is first determined to be “appropriate” prior art, and then used. But the means are different to that same end. An item may at once be both “prior art” and not be “prior art,” and it is this subtlety that to the uninitiated makes “no common sense,” but is perfectly common sense to one that has learned the legal terrain.

  6. 18

    Great difficulty…?

    Not at all MaxDrei.

    As to “draw you out,” is there something wrong with that? You too, if I recall correctly, have admitted to asking questions to stir the conversation, eh? Is there something amiss with wanting a conversation, that you seem to want to denigrate my doing so?

    As to “losing face,” that is not a concern, leastwise with me. Perhaps you inject your own animus and project that insecurity to me because even after forty years, your views so very often miss the mark. You are so very eager to not admit anything in our conversations, and always eager to praise others that happen to agree with your own “larger” views. Such does not go unnoticed, my friend.

  7. 17

    Non-ob, keep in mind that “anon” is bent on drawing you on. His answers are calculated to keep you coming. He craves what he calls a “conversation”.

    When he wrote that the:

    “…world of prior art for 103 is different than the world of prior art for 102.”

    I think he had in mind that, for any given item in the prior art universe, the way you use it in obviousness attacks can be very different from the way you would use it in novelty attacks. The poster “anon” is one of those who has great difficulty saying with precision what he means, with the result that readers read what he says and routinely misunderstand what he means.

    When challenged, his invariable retort, to avoid losing face, is along the lines of “That’s for me to know and you to find out”. Could it be that kicking into his thinking is his legal training, and the imperative never to “admit” anything, never to write along the lines of “What I meant to say was….”.

  8. 16

    You seem to…

    Not at all.

    I seem to be saying something easy and direct (short declarative sentences, even).

  9. 15

    Another terminology question (though not necessarily altered by the AIA): Does an infringing product “infringe a patent” or “infringe on a patent”? In other words, is the preposition “on” necessary or even proper?

    1. 15.1

      “Infringing product” is like “articles that infringe.” We kinds know what that means, but technically, it is the act of making, using or selling the invention that is an infringement.

      If what is made, used or sold completely embodies the invention, certainly there is an infringement. But what if what is sold completely embodies the “invention,” but the claims include convention elements or steps that are performed by others. The sale exhausts the patent. Presumably, the sale is also an infringement.

      I still think the Akamai decision is not fully compatible with Quanta and Univis Lens because it is not clear the en banc decision covers this.

    2. 15.2

      I think this topic is only about the inaccuracy of the language. And the problem is only the U.S. has the concept of “invention date”. In other jurisdictions, invention date is completely useless, when people refer to patent applications, they are talking the corresponding inventions.

  10. 14

    Dennis:
    If you really want to help us out with semantics, how about proposing a verb for the condition in which a reference of renders a claim obvious. We say “the reference anticipates the claim” but we have to say “the two references render the claim obvious” when we could say “the two references something-ate the claim.” It is really clunky to write an explanation of obviousness with currently accepted terminology.

    1. 14.1

      K. Davit Crockett,

      I take it you think this is much ado about nothing. However, I suspect Prof. Couch is looking for terminology to use in a class he teaches to students who don’ eat, sleep and breath this stuff (same for DC judges).

      We differ on the following: “And Dennis, I don’t know what you mean when you say that prior art that anticipates a claim “doesn’t necessarily anticipate the invention.” If it’s prior art, and it disclosed all the limitations of the claim, it does necessarily anticipate the invention, because that is the very definition of anticipation.”

      Claims are mutable, especially during prosecution. Thus, the invention can be redefined through amendments. To me, anticipating the invention means there is no possible claim based on the application that is not anticipated. An example is publication of the entire application more than a year before the effective filing date. In this case, the invention is anticipated before any claims are written. It is true that after a patent issues, claims are not easily changed and in the initial stage of litigation, it is the invention as claimed that counts.

        1. 14.1.1.1

          OK, that makes sense. But by statute, the claims define the invention (what the inventor… regards as the invention, per 35 USC 112(b)). In a world where the claims define the invention (by statute and in an oft repeated incantation that we have to respect if we are trying to speak the same language), it would make more sense to be clearer: The prior art might not anticipate the invention as it might be described in a narrower claim based on the spec, or it might not anticipate the invention as conceived by the inventor before the patent attorney broadened it, but it might anticipate “the invention” as defined by a claim the inventor submitted to the patent office. Teaching that the invention refers to something else will result in a class of graduates speaking a language different from the people who want to hire them, and leave them confused by case law that speaks standard patentese.
          The difference between “the invention” and “the claim” is something I bet you make clear when answering office actions: If the claim is distinguished from the prior art by feature X, you probably avoid telling the examiner that “the invention is distinguished from the prior art by feature X.” Otherwise all your claims might be limited by your argument.

          1. 14.1.1.1.1

            Whats wrong with:

            The claims are (allegedly) obvious in view of X and Y.

            If you must come at it from the other direction:

            References X and Y (allegedly) render the claims obvious.

          2. 14.1.1.1.2

            To me, invention = claims. Always has, always will. (Regardless of the fact that the courts sometimes look to the specification for the “invention”.)

            1. 14.1.1.1.2.1

              PatentBob, what is the difference between “the invention” and “embodies the essential elements of the invention” in connection with a sale of the invention, where a third party performs the conventional elements of the claim?

              1. 14.1.1.1.2.1.1

                Your questions are a complete non sequitur to the comment by PatentBob.

                You are (apparently) desperate to talk about something else…

                Maybe it’s time for you to retire Ned? Are you even aware how off you are?

                1. Anon, he was saying the claim is the invention when in fact the claim can contain completely routine elements. I think we lose site of this when the statute makes selling, using or making the invention an infringement.

                2. Maybe you are losing sight of “claim as a whole.”

                  That takes care of your “concern,” eh?

  11. 13

    In recognition of the AIA I submit that we should now call it anticiaiapation or antaiapation. Or just “aiapated” or “aia-pated” for short.

  12. 12

    I cannot understand your post, despite my decades working daily with issues arising from 35 USC 102 (old and new).
    “Prior art” sounds like a good name for things that qualify as prior art.
    Prickly people used to correct non-prickly people, insisting that prior art “anticipates a claim” and suggesting that those who spoke of prior art anticipating a patent were ignorant hayseeds. We all knew what we were talking about, but somehow the semantic exercise seemed fun to some.
    I suggest sticking what has been used to naturally describe the circumstance in which a single prior art reference discloses all the limitations recited in a claim: Anticipation, anticipating the claim, etc.
    Since the tests under old 102(a) and 102(b) were identical, both types of prior art “destroyed novelty” in the same way: by anticipating a claim.
    Under the new 102(a)(1) and (2), the test is the same, isn’t it? The boundaries of what is and is not prior art have shifted slightly, but the concept of anticipation has not changed. So, there is no need for new language.
    And Dennis, I don’t know what you mean when you say that prior art that anticipates a claim “doesn’t necessarily anticipate the invention.” If it’s prior art, and it disclosed all the limitations of the claim, it does necessarily anticipate the invention, because that is the very definition of anticipation.

    1. 12.2

      Agreed. 102 identifies prior art. 103 the standard to be used when a single reference art does not anticipate a claim. But the art for 103 purpose is that identified in 102.

      1. 12.2.1

        The world of prior art for 103 is different than the world of prior art for 102.

        Basic stuff guys.

          1. 12.2.1.1.1

            Take a basic IP course. If you have to ask such a question on a basic principle, then my explanation will undoubtedly go over your head.

            1. 12.2.1.1.1.1

              You seem to be referring to 103(c) which no longer exists. The common ownership exception now appears in 102(b)(2)(C), and this eliminates that difference. What differences survive? What differences are new to the AIA?
              But even when 103(c) was in effect, it still referred to 102e, g and g references as prior art:it just said that prior art did not preclude patentability. It did not say those references were no longer prior art.

  13. 11

    PROGRESSIVE CASUALTY v. LIBERTY MUTUAL
    link to cafc.uscourts.gov

    Even though the Federal Circuit held that the decision of the Board in a CBM was supported by independent grounds, it determined that a final written decision that was based upon a new argument first raised by the petitioner in a reply brief cannot be relied upon by the Board in its final written decision.

    “Neither Liberty’s petition nor the Board’s institution decision had pointed to the insurance-table passage of Kosaka; it was raised for the first time, as teaching claim limitations, in Liberty’s post institution reply brief—after Progressive no longer had a full opportunity to respond to it with evidence.

    Liberty, along with the Director of the PTO, argues that the Board’s reliance on the previously unmentioned passage in Kosaka was not a “new ground of rejection” because that label applies only in examination and reexamination. See 37 C.F.R. § 41.50(b); 37 C.F.R. § 41.77(b). But the Administrative Procedure Act imposes its own similar obligations on Board actions, including in covered business method reviews. For example, 5 U.S.C. § 554(b)(3) requires that “[p]ersons entitled to notice of an agency hearing shall be timely informed of . . . the matters of fact and law asserted”; § 554(c) requires that agencies give “all interested parties opportunity for . . . the submission and consideration of facts [and] arguments . . . [and] hearing and decision on notice”; and § 556(d) “entitle[s]” a party “to submit rebuttal evidence.” Indeed, § 554(b)(3) has been applied to mean that “an agency may not change theories in midstream without giving respondents reasonable notice of the change” and “the opportunity to present argument under the new theory.” Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256– 57 (D.C. Cir. 1968). The APA’s requirements may well embody, in substance, the inquiry at the heart of the new grounds-of-rejection analysis: “whether applicants have had fair opportunity to react to the thrust of the rejection.” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (internal quotation marks and citation omitted).”

    1. 11.1

      Ned you left out a key aspect of the decision: If there was [a notice] error, it was harmless. The Board did not rely solely on the insurance-table passage of Kosaka. It independently rejected Progressive’s lack-of-knowledge argument, making a determination supported by the evidence that a relevant skilled artisan would have understood fuzzy logic.

      But it is noteworthy that Progressive’s “Appeal Appeal Appeal!” strategy amounted to squat. Five completely junk patents on “automating” various aspects of insurance rate calculation are now tanked forever. None of them should ever have granted in the first place.

      Two of the patents were effectively Rule 36 judgments of the Board’s obviousness determinations (“We have fully considered Progressive’s arguments and find them unpersuasive. We affirm the Board’s decisions without further discussion.”).

      Another patent was tanked because of an egregious written description issue.

      A forth patent was tanked as obviousness after the Federal Circuit swept aside the desperate Progressive procedural attack, as I already described.

      The discussion of the tanking of the fifth patent is possibly of most interest because of the Federal Circuit’s willingness to read the Board’s decisions “as a whole” and fill in the “missing” motivation to combine. In other words, the Federal Circuit used its grown-up brain to crush a junk patent so everybody’s time wouldn’t be wasted all over again:

      [A] relevant skilled artisan would have been motivated to make insurance determinations more accurate and would have known of at least some use-based actuarial methods, he or she would have been motivated to look at use-monitoring methods in other safety-related contexts to see what else might yield helpful actuarial data. The Board did not clearly state this rationale in any single portion of its decisions…. Nevertheless, the rationale is apparent when the decisions are read as a whole.

      This is a great example of the CAFC actually doing its job. Please keep up the great work.

      Lesson for habitual appealers of procedural issues that will never rescue your junky patents: find a better way to waste your time and money.

      1. 11.1.1

        MM, thanks for the clarification. I thought I had covered it with the “independent grounds” point.

        But the point I made is of most interest to IPR practitioners.

  14. 10

    Apologies for interrupting this hugely important thread but did everyone see where sooperpundit Bill Kristol suggested that Justice Alito might consider running for President (as a Republican, of course)? See, e.g., link to lawyersgunsmoneyblog.com

    A successful run would certainly shake things up a bit. Back in the 19th century, apparently, it wasn’t unusual for Supreme Court justices to campaign from the bench. More here: link to scotusblog.com

    1. 9.1

      If you are suggesting that “discloses” be used instead of anticipates, there is a problem of the time element connotation. A document can be published AFTER the filing date of the application that “discloses” the invention.

  15. 8

    Jefferson: from Act of 1793, Section 1: “not known or used before the application…”

    As explained in Pennock v. Dialogue, commercial use or sale of the invention by the applicant prior to filing abandons the inventor’s right to a patent. However, public knowledge and public use by other also “bars” the right to a patent.

    The public use and public knowledge by others was and is rightly called “lack of novelty” even though it was then measured at the date of filing.

      1. 8.1.1

        Hey, anon, we had first-inventor-to-file in 1793. If, at the time of filing, the invention was known or used, worldwide, it lacked novelty.

        The statute as phrased is correct.

        1. 8.1.1.1

          You are being excessively obtuse and quite deliberately omitting the items from the Congressional record that impact THIS law – not the previous law that you are attempting to hold up (incorrectly) as controlling.

          The sad thing is that you should know better because we have had long discussions on this point. This makes your present advocating especially troubling, not just inte11ectually dishonest but quite possible unethically so.

          Watch your advocacy son.

            1. 8.1.1.1.1.1

              It sounds super serious, though, Ned!

              Be very, very careful or you might end up “decimated” like so many before you.

              LOL

                1. Or at least every 10th commenter

                  If only I were so lucky. There is far more C R P on these boards than “every 10th commenter”

    1. 8.3

      Dennis, the status of the prior art as being before the application only establishes its legal status as available for either 102/103 purposes. Whether it anticipates further depends on whether that prior art discloses and fully enables a claimed invention. Otherwise it is only available for 103 purposes.

      Since the same prior art is used for both purposes, one should avoid describing the prior art as anticipatory when it is not

      1. 8.3.1

        …hence one reason for the demise of the Jepson style claim format.

        Maybe you haven’t noticed…

  16. 7

    1. Art never anticipates the invention, so that phrasing has always been wrong. If a document was published prior to the alleged invention claimed, then the alleged invention claimed was not an invention.

    2. I have never been comfortable with the word “anticipate” in the context of 102, as it sounds like the document was waiting for someone to invent the invention. Like me anticipating the invention of the Jet Pack and the Transporter Beam I was promised.

    3. Why not simply “predates” where we all know that the word is shorthand for predates the application/priority date. Or, “prior art” where we all know we mean prior to the application/priority date.

    1. 7.2

      Les:

      Art never anticipates the invention, so that phrasing has always been wrong. If a document was published prior to the alleged invention claimed, then the alleged invention claimed was not an invention.

      Disagree. If the invention was legally prior art prior to the date a second inventor invents, there is invention, but the subject matter is not new on an absolute basis and not patentable because the statutory conditions on patentability.

      1. 7.2.1

        Ned –

        Words have meaning. In this case:

        Full Definition of INVENT
        transitive verb
        1
        archaic : find, discover
        2
        : to devise by thinking : fabricate
        3
        : to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment

        link to merriam-webster.com

        There is no such thing as a second inventor. The second actor designed something that had already been invented. Ignorance of prior invention does not make one an inventor. One can discover something for ones self, or perhaps for Spain, but invention doesn’t work that way.

        1. 7.2.1.1

          Les,

          We’ve been over this before – there very much can be multiple inventors based on how the term is used as a legal term of art.

          You need to recognize your over-dependence on a non-legal definition.

          It might help you if you were to explore the topic from an understanding of perfecting an inchoate right into a legal right.

          1. 7.2.1.1.1

            Words are to be given their plain meaning ….except where we want to make up a new meaning?

              1. 7.2.1.1.1.1.1

                Ned –

                At 7.2.1 I was making a point about a difference between invention and discovery. Invention occurs once (by definition), whereas the same item or fact can be discovered individually by separate entities for themselves.

                As to your question, I’m confident the New World is not a process, machine or manufacture. I’m skeptical on the issue of composition of matter, but would entertain arguments.

                As I thought was implied at 7.2.1, I think Chris would have had “known or used by others” issues to contend with as well.

                So, we would need more information as to who the discoverer was and when the discovery was made.

                1. Your difference carries no distinction in the consideration of an inchoate right being made into a legal right, nor the notion that there – in fact – can be more than one person with an invention (simultaneous or not).

                  Independent invention, that is, invention by multiple people of the same thing independently and unknown one from another, is simply a matter of fact. This is NOT something new with the AIA, nor with the Patent Act of 1952, and verily has been a part of the patent system from the very beginning (hence the “this is not new” comment).

                  You seem only too eager to get caught up in semantics, my friend.

                2. I appreciate that we don’t have a word to describe creating an embodiment of something that has already been created of which you are not aware. And I am not attacking anyone, who in desperation or exasperation with the failings of the language resorts to “second inventor” or “independently invented.” Just know you are using the word incorrectly and those extra highlighting words are important.

                  A second “independent invention” is not an invention. If we or the second inventor was aware of the previous invention, we wouldn’t call him an inventor would he? Does his ignorance of the actual invention make him an inventor?

                  According to you it does. That simply makes no sense.

                3. Les,

                  You cling too tightly to a context that just does not apply. Those “extra words” as you call them carry well established meanings.

                  You seem to want to fret over the lack of a “single word” when the legal language already provides – and has always provided – the additional words that clarify the context.

                  Wake up son.

                4. No doubt, Les, “discoveries” are patentable — but you yourself agreed that only such discoveries that also comply with the rest of 101, and of course 102/103 and 112, are patentable. Thus a discovery of something that is “old” cannot be patented pursuant to 101 because 101 that requires that the subject matter be “new.”

                  I assume we agree that one cannot discovery machine, a manufacture, or a process. But one can discover a law of nature or a product of nature.

                  But a product of nature is not new. Therefore, as limited by 101, a discovery of a product of nature cannot be patented. But the use of a product of nature in a new process is patentable.

                  Also a law of nature is not new. But an application of the law of nature to produce a new result is patentable is process.

                5. Discoveries are patentable.

                  There is nothing to discover but laws of nature and products of nature.

                  Therefore, the nonsense about laws and products of nature not being patentable is just that, nonsense.

                6. No I didn’t Ned. Newly discovered is new. Newness is judged under 102. Does “known or used by others” ring a bell?

                  If the cure for cancer is naturally occurring but unknown then when it is discovered, it will be patentable. Just as if the same chemical were discovered in the lab and no one knew that it was naturally occurring.

                  Otherwise, no chemical is patentable because every chemical has probably existed somewhere in the universe at some point in time.

            1. 7.2.1.1.1.2

              That just it, Les – it is NOT a new meaning – it is merely the meaning in the legal context.

              You are trying to be so open minded that your brain falls out.

              1. 7.2.1.1.1.2.1

                What legal reference are you using for this legal definition you have in your well sealed head?

                1. The US Constitution, the writings of the original authors of that constitution concerning inchoate rights, patent rights and natural rights (including but not limited to the Federalist Papers), and the various patent acts passed by Congress.

                  Thanks for asking.

                2. Asked and answered – as mentioned, U.S. Patent law has always recongized a “race to the Office” of one sort or another. There is no such thing as a “race of one.”

                3. That race is between applicants, not inventors.

                  You did not answer the question. You are being evasive and making crape up.

                4. I did answer the question.

                  By your “reasoning,” only one applicant is even allowed to be an applicant, and all others necessarily have L I E D on their oaths.

                  You really need to see and understand the legal framework in which your dictionary mindset is at play.

                  (And please, leave the “insults” aside – they won’t help you)

                5. No. Plural inventors, for example, working together can invent something.

                  No one has to lie on their oath. The oath says they BELIEVE they are the inventors.

        2. 7.2.1.2

          Les, two people independently invent. Both reduce to practice. A is first. B is second. A puts his invention on the shelf, keeps it secret. B applies for and obtains a patent.

          Is B’s patent invalid because he was not the first inventor?

            1. 7.2.1.2.1.1

              The Madstad case “failed” for alleged lack of standing. That was the only “critical” issue.

                1. Rather than reaching the merits of MadStad’s allegations, the district court rejected the case for lack of standing. The Federal Circuit has now affirmed that decision — holding that MadStad’s potential injury due to the legal change is too speculative. MadStad’s alleged injuries due to the change are creative, but ultimately the court determined that they lacked sufficient concreteness.

                  link to patentlyo.com

                2. Great.

                  Now re read what I actually wrote.

                  Did I limit myself to the single thing that was dispositive in the court’s ruling?

                  Hint:no

                3. Well, for starters you said I was ABSOLUTELY incorrect when quite clearly I was completely correct.

                  What part of “Rather than reaching the merits ” don’t you understand?

                4. …and yes, that is absolute (and your almost-clever “what part don’t you understand is AFTER my comment, and to which I already replied “Great.”

                  How many ways do you want to be wrong here?

            1. 7.2.1.2.2.1

              Then you would agree that our present system grants a patent to the second, but putative, inventor because the first to invent has abandoned his invention.

              Is this unconstitutional?

  17. 6

    Here in Australia we speak of prior art that ‘anticipates’, ‘destroys novelty of’ or ‘is prejudicial to the novelty of’ a claim (and other such similar phrases). Since each claim can, in principle, have its own priority date (effective filing date, in AIA terms), it makes little sense to refer to novelty of an application or a patent.

    By the same token, we would refer to prior art that is prejudicial to inventive step of a claim, or that renders a claim obvious, our some such terminology. Everywhere but the US the distinction is not merely academic, because there are prior art references (earlier filed, but later published applications) that are pertinent for purposes of novelty, but not obviousness.

    1. 6.1

      Good points from Summerfield. The name of the game is the claim, even in the USA. Only in the USA is the distinction lost, between the very different attacks of lack of novelty, and obviousness. In the rest of the world one has to be scrupulous about ascertaining whether a prior art reference prejudicial to the novelty of some particular claimed subject matter is or is not available to found an obviousness attack on that particular claim.

      Terminological distinctions mattered little, when the USA had FtI and ROW had its conceptually very different FtF. But now that the USA has FItF, the scope for confusion is greatly increased, whenever practitioners toggling between jurisdictions unwittingly use the same terminology to refer to different things. All the more reason to select and use clear and unambiguous terminology in each and every jurisdiction. Thank you Dennis, for flagging this up!

      1. 6.1.1

        Max, that is a good point about the difference between FtF and the U.S. AIA FItF. But that difference is the AIA very narrow [and disputed in necessary disclosure scope] U.S. U.S. prior art avoidance filing grace period for a prior public disclosure by the inventors for the one year before they file.

        1. 6.1.1.1

          Dennis, that leads to an important statistical question. What % of U.S. AIA applications actually used the limited AIA grace period to overcome prior art occurring between the inventor’s public disclosure date and their filing date? It may be too soon to tell but I suspect it will be a quite small %. Have any readers used it yet?

          1. 6.1.1.1.1

            There is no way to quantify that number Paul.

            This is easy to see, if you were involved in prosecution.

      2. 6.1.2

        Max, availability of prior art is one thing. A different thing is when the reference does not fully disclose/enable the claimed invention. That prior art is available only for 103 purposes.

        I think you Euros are too much thinking about availability.

        1. 6.1.2.1

          Ned, also in Europe, only enabled disclosure is effective for attacking novelty. First you determine what is disclosed and whether prima facie it is prejudicial to novelty, then determine whether it is enabled.

          Obviousness is different. Of course. How could it be otherwise?

          What prompts you to caution us Euros that we are thinking over-much about availability? Where did you get that idea from?

          1. 6.1.2.1.1

            Well, Max, in the US, a patent is good for 103 as of its filing date. Not so in Euro-land. That is why I was suggesting that there is a difference between the two lands in the way they treat prior art simply by making it available for one but not the other test as in Euro-land. There are no such distinctions here in Yankee-land.

    2. 6.2

      Everywhere but the US” is incorrect. Even here, the “world” of prior art for 102 is not the same “world” of prior art for 103.

      Notwithstanding the constant drivel one sees here on “America’s leading source’ (in the comments by the Malcolm and the Echoes, of course ;-) )

      1. 6.2.1

        That’s an interesting thought. Could you provide examples in addition to “on sale”[before the product access date] and “non-analogous” prior art [which varies considerably in value depending on how strictly KSR is applied against it.] Or, does the EPO also allow a “non-analogous” argument against otherwise applicable prior art?

        1. 6.2.1.1

          I won’t speak to what the EPO allows or does not allow, but see Post 1 below.

          The change to 102 – including the title change – was on purpose to drop the “personal bar” aspects.

          They are gone.

          And that is not a bad thing – “new to you” is still new. Sure, one runs the risk of having someone else file, but even that risk has been greatly ameliorated with the “right” (really a submarine counter-attack) of the Prior User Right.

          Escape that year delta, and you are golden.

          1. 6.2.1.1.1

            Since the subject here is the U.S. AIA 102, that begs the question unless those are prior art differences between the EPO and the U.S. that still remain after the AIA.

            The AIA-expanded personal commercial user right statute is a purely personal defense for prior commercial users against later-filed patents. It is not a category of prior art and has no prior art effect on patents or applications. I do not know what foreign countries may or may not have a similar statute?

            1. 6.2.1.1.1.1

              I see no controlling reason why the “question is begged” in relation to other foreign law.

              Comparative analysis is neither helpful nor pertinent on this point.

  18. 5

    The English have always used “anticipate” to distinguish novelty attacks from those of obviousness. But the distinction is not understood on mainland Europe (nor anywhere else where English is not the resident language). So Europe talks about prior art prejudicial to novelty, and prior art relevant for obviousness.

    I suggest that, from now on, terminology under the AIA be devised and used that makes it immediately evident whether one is talking about novelty or obviousness. Otherwise, confusion will ensue.

    In any discussion of the prior art that is indiscriminate, as between novelty and obviousness, it is the prior art available to dispute “patentability”. That terminology might help to put distance between discussions of patent eligibility under 101 and those about patentability under 102 and 103.

    1. 5.1

      Max, the distinction between prior art that fully enables the invention and prior art that only suggests the invention is the primary distinction we are looking for here, I think, as the distinction between 102 and 103.

      1. 5.1.1

        That is a decidedly bizarre view.

        One that leads to the use of “science fiction” as permissible under 103.

        Or don’t you realize that?

        1. 5.1.1.1

          anon, if a reference does not fully disclose/enable the claimed invention, it still can be used for 103 purposes.

          The fact that you deny this is a further indictment of your alleged credentials.

          1. 5.1.1.1.1

            You want to quibble about alleged credentials, even as you blindly get things so seriously wrong as to throw away whatever “credentials” you may have left…?

            You sir, and with all due respect, are a joke and nothing more than a mouthpiece for attempting to change what IS the law into some other version of the law.

            The Ned Merry Go Round continues.

            1. 5.1.1.1.1.1

              Anon, a dedicated disciple of Judge Rich, who so long labored under the idea that the ’52 Act was a repeal of prior case law, particularly, the law of “invention,” that 101 was more than to be nominally applied, that 112(f) operated to repeal Morse->Halliburton on claiming results, I daresay that it is you who want to twist the law in a way that was and is unwarranted.

              In virtually every case where the Supreme Court has considered it, the Supreme Court has ruled that Congress did not intend to change the law, but merely to codify it. That, after all, was what Congress commissioned Federico to do, and that is what Congress was told by Federico and Rich that the Act in fact did. 271(b)-(d) are an exception. The Court has yet to consider the impact of 112(f).

              Regarding 103, Federico quotes congress as follows:

              “Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts.”

              “That provisions paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. ”

              “There is no provision corresponding to the first sentence explicitly stated in the present statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention of lack of patentable novelty has been followed since at least as early as 1850.”

              Then Federico cites to Hotchkiss as to what the new clause really means:

              The use of the word “invented” in this phrase [101] has been asserted [by Rich and his disciple, anon] as the source of the third requirement under discussion. However, a different origin, with which the language and arrangement in the new code are in harmony, has also been stated. This is that the requirement originally was an extension of the statutory requirement for novelty. Expressions such as “patentable novelty” and “patentable difference over the prior art” have been often used as synonyms, and the problem involved is in fact an assessment of the quantum or quality of the novelty present. The famous “doorknob case” in the Supreme Court, Hotchkiss v. Greenwood, 52 U.S. (Dec. term, 1850), is usually cited as the first case to make requirement. It is commonly stated that this case involved the question of invention in making a doorknob from clay or porcelain, but this was not the actual question involved, and the decision of the court plainly implies that if the patentee had been the first to make a doorknob of clay or porcelain there would have been no question as to the validity of the patent involved. The actual facts were that doorknobs made of clay or porcelain were old and that doorknobs made with a certain shaped hole for attachment of the shank, but made of metal, were also old; the doorknob of the patent had the old shape of the metal doorknob and was made of clay or porcelain, the old material for making other doorknobs. There would be very little question today as to the unpatentability of a device with such a difference over the prior art. The Supreme Court, with a dissenting opinion, found the patent invalid as involving no more “ingenuity and skill” than possessed by “an ordinary mechanic acquainted with the business.”

              Although other language is also used, one quotation from the decision is significant, “No one will pretend that a machine, made, in whole or in part, or materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent.” This would place the matter on the basis of novelty, the new machine cannot be distinguished from the old, hence it is the same, and is not novel in the sense of the patent law. Even before the date of this decision, expressions such as essentially anticipated, not essentially new, substantially alike, and not materially new, are found in some decisions.”

              Clearly, Congress believed it was enacting the rule of Hotchkiss that had to do with “novelty” over the prior art — everything in the claim was old, the mechanics of the door knob, the clay material for a door knob, the mechanical relationship of the one to the other. In contrast, Rich asserted time and again that 103 overruled the prior case law’s requirement for “invention.”

              But the weight of evidence, Federico, and the Supreme Court itself as stand against Rich and therefor you, anon.

              1. 5.1.1.1.1.1.1

                Absolutely wrong Ned.

                I am merely on the side of Congress.

                On that side stands Federico.

                On that side stands the weight of evidence.

                And yes, on that side stands Rich.

                On the other side, stands a governmental body that does not respect the constitution, even as it is called to protect it, by glomming onto its power addiction and not respecting the separation of powers.

                Your “version” is exactly why Congress reacted against the Royal Nine.

                You are the one hiding from the plain facts of history.

                You are indeed the malfeasor here – tell me again what your attorney’s oath actually says…

    2. 5.2

      MaxDrei: That is pretty much how it is done by practicing patent attorneys in the US: Anticipation and obviousness are clearly distinct concepts in practice. Office actions, responses, summary judgment motions, opinion letters, etc. are typically worded in terms of anticipation and obviousness, using the all-elements rule as the baseline for discussing anticipation, and KSR/Graham v. John Deere as the baseline for discussing obviousness, so that it is immediately evident whether one is talking about novelty or obviousness. At least, in a few years of practice, that is what I observe.
      Case law on 101 does confuse the concept of eligibility with obviousness, often stating that something is not eligible because it has been done before, when that is totally unnecessary to establish that it is not eligible. But that is a whole different conversation.
      On your point about EPO idiom, though I notice that EPO examiners and patent attorneys prefer to discuss concepts like “novelty destroying” and “lack of inventive step,” I don’t see much conceptual difference between those concepts and US concepts of anticipation and “rendering obvious.”

      1. 5.2.1

        OK David. Here:

        “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.”

        is the EPC’s Section 103. As you see, “obvious” is the antonym of “inventive”, and Art 54(3) prior art is not available for obviousness attacks.

      2. 5.2.2

        Davy, “Case law on 101 does confuse the concept of eligibility with obviousness, often stating that something is not eligible because it has been done before, when that is totally unnecessary to establish that it is not eligible. But that is a whole different conversation.”

        Huh?

        Not “because.” That is an “aside.” Clearly even very old, ineligible subject matter can be applied in a new way to transform a process. See, Diehr.

        However, it is critical that the otherwise eligible subject matter that is recited in the claim be old and convention — usually claimed functionally. Think “pencil” and “rubber head” from Rubber-Tip Pencil. Think the process of administering a drug and preforming a blood test to look for specific metabolites from Mayo. Think generic computers from Alice.

        1. 5.2.2.1

          After reading the recent abstract idea cases, I came to the conclusion that the assertion that the idea is old is not merely an aside in these cases, but an integral support of the assertion of abstraction. You are right that Diehr did not make this mistake, and in fact expressly warned against it (“The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. 102 or the “nonobviousness” requirements of 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under 101”). In re Benson was also clear: The novelty of an equation does not effect its eligibility. But the recent cases make a mess of it.

          1. 5.2.2.1.1

            What is worse, K. Davy Crockett, is that certain advocates refuse to understand the dichotomy created by the Court in its scrivining attempt to mash the wax nose of 101 to rewrite patent law in its image, and mindlessly and endlessly ignore the incompatibility that the Court has created.

            Just ask Ned what was the “Point of Novelty” in Diehr and watch him scurry away.

            I am sure that he will refuse to see his own duplicity in the comment directly above: that “even very old, ineligible subject matter” is something that he “argues” on every thread, but refuses to engage in any discussion that points out that ALL claims have a bit of this.

            Here’s a recent snippet:

            A: Software is not a method, the execution of software may be claimed as a method

            N: La la la la (fingers in ears)

            N: You can’t patent that, that’s a mere use.

            L: One is allowed to patent “uses.”

            N: But you cannot patent “data.”

            L: No one is saying patent “data.” Just like when we discussed the ability to patent the shaping of wood. Do you remember? You keep on making the same mistake of trying to pass judgment on elements instead of the claim.

            N: La la la (fingers in ears)

            L: A use that transforms a workpiece. That’s expressly patentable – Congress even defined that in 35 USC 100(b).

            N: I need help, my argument does not work.

            A: Ned obscures what software is, attempts to say that software is the execution of software, attempts to say that software is “use of machine,” runs into the problem that Congress explicitly says use of machine is patentable. Les points this out. Ned is “confused,” and somehow thinks the discussion has gone off the rails somewhere. Ned does not have a Plan C. Time to run away again.

            The Merry Go Round continues.

            And will continue to go round until we see some inte11ectual honesty from Ned.

  19. 4

    Er – this seems a little bit… academic to me.

    Patent rights are affected by two things: references, and events. “Prior art” is a reference or event that limits patent rights – specifically because it meets the definition of 35 USC 102. If a reference or event doesn’t meet the definition of 102, it’s not “prior art.” The End.

    This is a quite basic concept, but even examiners sometimes get caught up in the particulars – leading to the following incident, which happens to me about once every two years:

    Virtually every specification I write starts with Figure 1, showing a conventional example of the scenario or technique upon which the invention improves. I start this way in order to establish terms, to illustrate the problems that the invention addresses, etc. Occasionally, an examiner objects to the figures and demands that I resubmit Fig. 1 labeled as “Prior Art,” to which I have to respond:

    > Figure 1 is not admitted as prior art. Figure 1 presents subject matter that is not currently claimed, but does not meet the definition of “prior art” set forth in 35 USC 102 with respect to the present application.

    > If the examiner wishes to identify this subject matter as prior art, the examiner is requested to identify a reference demonstrating such subject matter that meets the definition of 35 USC 102.

    The objection is always succinctly withdrawn without further argument – but I’ve had this exchange with enough examiners to recognize that this error is surprisingly common.

    1. 4.1

      Providing a figure like that can be a good idea. But if that figure was actually based on prior art one was aware of, one would not want to be deposed about either that OR the express prior art characterizing denial in the file wrapper if the patent was ever sued on. Even if not IC it might be used by the defendant to throw some mud in the litigation to make it look like a lack of ex parte “candor,” It might also provide an expanded discovery opportunity in an IPR that would not otherwise be granted by the APJ. [Something one now has to think about in patent enforcement.]

      1. 4.1.1

        Good point, but the content is never overly specific.

        I’m generally aware that processors need a voltage source, usually in the form of a battery or a wall socket. Some of my figures even allude to that aspect. However, I don’t ever disclose it in an IDS, even though nearly every application that I’ve ever filed relies on that fact.

        It’s all stuff like that. Here’s an example (completely hypothetical) of the type of explanation I might provide for an invention involving a compiler optimization:

        Computers generally feature processors that execute instructions specified in a machine language. However, writing software in that language is difficult for users. Instead, a programming language may be formulated that allows instructions to be specified in human-readable manner and at a high level, and a compiler is utilized to translate code written in the high-level language into machine-language instructions that the processor is capable of executing.

        Compilers also frequently optimize the specified instructions to generate machine-language that performs more efficiently, such as faster or with reduced resource consumption. Such optimizations can include, e.g., reordering instructions, skipping instructions, or replacing some instructions with different instructions that are functionally equivalent but more efficient.

        It’s all conventional, right? I wouldn’t have a problem with an examiner taking official notice of all of that material, or even failing to cite any reference with respect to any claim elements providing that material.

        But, no, I’m not submitting an IDS with a reference showing that basic info. I’ll argue that having disclosed this unclaimed subject matter in the actual specification is plenty good enough. And, no, I won’t resubmit it as a figure labeled “prior art” – because I refuse to let my own patent application be characterized as “prior art” against itself – that’s not how 102 works.

  20. 3

    Just to add a further semantic confusion thought, “anticipation” is usually associated with a full single reference teaching of an entire claim, but 102 also defines what can be 103 [potentially combineable] prior art.

    So why not stick to just saying that 102 defines what is prior art, to both applications and patents?

  21. 2

    Dennis,

    Re: “I propose using the middle ground of “anticipating the patent” or “anticipating the application,” depending upon whether a patent has yet issued.”

    I understood that anticipation applies to information that comes before that discloses (at least inherently) every element of a claim. For an application, before means before the effective filing date. For a patent, assuming support for the issued claims, it is the same effective filing date and not the date of the issued patent. The information you refer to as anticipating the patent is probably discovered after issuance. If do-overs were readily available, then one would be back to anticipation of the (reexamined) application having the claims of the issued patent.

    I think anticipating the patent suggests the wrong date and anticipating the application works well enough even if a patent has issued.

    1. 2.1

      On second thought, when an application is anticipated, colloquially, one (I) take this to mean that no novel claims can be found. For a patent, this is usually measured against the issued claims but colloquially, it might also mean that there is nothing new in the patent description. So are you speaking colloquially or defining new terms of art? Could you expand on this?

  22. 1

    See the Soliloquy.

    Bottom line: if it is “new to you,” it is new.

    (Yes, that expressly means that Metallizing” is gone)

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