by Dennis Crouch
It is not clear from ,u reading the AIA revisions that “secret prior art” (102(b)(2) prior art) continues to qualify as prior art for the obviousness analysis. The obviousness provision (Section 103) refers to prior art in the context of what would be known “before the effective filing date of the claimed invention to a person of ordinary skill in the art.” And, almost by definition, information only available in a secret patent filing at the PTO would not be known to this mythic POSITA. In addition, the AIA indicates that one purpose of the amendments is to bring US law in line with that of other nations [who do not rely upon secret prior art for the obviousness analysis.] Despite these argument, I suspect that the Federal Circuit will continue to push to maintain the old rule since there is not clear textual or congressional indications of an intent to change the tradition.
Post-AIA patent applications are now trickling up to the PTAB in ex parte appeals from examiner rejections. In the recent decision Ex Parte Kirk, APPEAL 2017-003486, (Patent Tr. & App. Bd. Oct. 26, 2017), the Board affirmed an examiner’s obviousness rejection based upon the combination of a 102(a)(1) reference (an application published prior to Kirk’s effective filing date) and a 102(a)(2) reference (an application published subsequent to Kirk´s effective filing date, but filed prior to that date). In the appeal, the Board did not expressly consider the propriety of applying 102(a)(2) references to the obviousness analysis. See also, Ex Parte Linkedin Corp., APPEAL 2017-005043 (Patent Tr. & App. Bd. Sept. 25, 2017).
The use of secret prior art (patents that were unpublished as of the critical date) goes back to the Supreme Court decision in Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965). In that decision, the court held that it was proper for the PTO to consider a pending patent application as prior art to bar a later-filed application. There the court wrote:
Petitioners’ primary contention is that the term ‘prior art,’ as used in s 103, really means only art previously publicly known. In support of this position they refer to a statement in the legislative history which indicates that prior art means ‘what was known before as described in section 102.’ . . .
When Wallace filed his application [the prior art application], he had done what he could to add his disclosures to the prior art. The rest was up to the Patent Office. Had the Patent Office acted faster, had it issued Wallace’s patent two months earlier, there would have been no question here. As Justice Holmes said in Milburn, ‘The delays of the patent office ought not to cut down the effect of what has been done.’
To adopt the result contended for by petitioners would create an area where patents are awarded for unpatentable advances in the art. We see no reason to read into s 103 a restricted definition of ‘prior art’ which would lower standards of patentability to such an extent that there might exist two patents where the Congress has plainly directed that there should be only one.