When Your Patent is “Anticipated by a Prior Reference”
The Patent Examiner argues that one or more claims of my Patent Application are anticipated by a prior reference. What does this mean?
In short, it means that the Examiner argues that someone else invented your invention before you did.
Let’s expand on that:
35 United States Code (U.S.C.) 102, in part reads: “A person shall be entitled to a patent unless – the claimed invention was patented, described in a printed publication…before the effective filing of the claimed invention…” 35 U.S.C. §102 requires that the prior reference must have existed before your Patent Application was filed. When the Patent Application’s claim is rejected under 35 U.S.C. §102, the Examiner argues that the rejected claim is “anticipated.”
When a Patent Examiner argues that one or more of your Patent Application’s claims defining your invention are anticipated, the Examiner is saying that a single prior reference discloses all of the structures of your invention.
The Patent Appellate court[i] has held, “For a prior art reference to anticipate in terms of 35 U.S.C. §102, every element [structure] of the claimed invention must be identically shown in a single reference…These elements [structures] must be arranged as in the claim under review.”
How Can I Counter the Rejection?
One way to counter the Patent Examiner’s anticipation rejection is to amend the claim.
Therefore, you can amend the anticipated claim by deleting structure or adding structure to your invention. Additionally, you should add the changes to the wording of the Patent Application’s claims. For instance, if the alleged anticipated claim required a piece of furniture with four legs, you could exclude one of the legs from the claim to create a table with three legs. Similarly, you could add a back support to the claim to create a chair.
In addition, you can argue that the Examiner’s prior reference fails disclose every structure of your invention as claimed in the Patent Application.
How Similar in Structure and Use Does the Anticipated Claim Have to Be?
For instance, can the Patent Examiner use a prior reference that is unrelated to my invention’s use to successfully argue that my claim is anticipated? Can you give me an example?
Sure! Let’s take the question “Can an Oil Can’s Nozzle Anticipate a Popcorn Dispenser?” which was the basis of an actual case!
Yes. An oil can’s nozzle does anticipate a popcorn dispenser. Here’s how it was argued:
In the case of In Re Schreiber, 128 F. 3d 1473 (Fed. Cir. 1997), the Patent Examiner argued that Swiss Patent No. 172,689-Harz disclosed a “spout for nozzle-ready canisters” that anticipated Schreiber’s claim for a popcorn dispenser.
On Page 1447 of Schreiber, the Court of Appeals for the Federal Circuit wrote:
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- Schreiber argues…that Harz [Swiss Patent No. 172,689] does not disclose that such a structure can be used to dispense popcorn from an open-ended popcorn container.
- Although Schreiber is correct that Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat anticipation.
- It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.
In conclusion, according to Schreiber, the function of the invention is irrelevant to the Patent Application’s claims in the United States. So an existing patent on an oil can did, in fact, prevent the patent of a popcorn dispenser with a similar shape, despite the completely different function.
Patent Law Can Be Confusing
If you need legal assistance with responding to a USPTO Office Action, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.
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[i] In Re Bond, 910 F.2 831, 832 (Fed. Cir. 1990).