CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent
By BarberJP - Own work, Public Domain, https://commons.wikimedia.org/w/index.php?curid=5040682

Patent Board Says Anticipation Can’t Involve “Picking and Choosing”

Anticipation
Can’t involve picking, choosing,
Says the Patent Board

The Patent Trial and Appeal Board (PTAB) has reversed the rejection of a patent application, finding that the examiner engaged in improper “picking and choosing” of prior art elements.

Ex parte Eckhardt involved a patent application for a multilayer pressure-sensitive adhesive (PSA) assembly.

Certain claims of the patent were rejected by the patent examiner under 35 U.S.C. § 102(a) as being anticipated by prior art cited as Bartholomew and Zajaczkowski.

35 U.S.C. § 102(a) addresses “novelty” as one of the conditions for patentability. An invention isn’t “novel” if it’s known to the public before the patent application was filed.

As Cornell Law School’s Legal Information Institute explains,

In patent law, anticipation refers to the prior invention or disclosure of the claimed invention by another, or the inventor’s own disclosure of the claimed invention by publication, sale, or offer to sell prior to the inventor’s application for a patent. In other words, if someone else has known about or used the invention before the patent applicant applies for a patent, that patent applicant will not be entitled to a patent.

Anticipation is grounds for invalidating or rejecting a patent because it means that the claimed invention lacks novelty. Patent invalidity based on lack of novelty, or anticipation, requires that the invention was known or used by others before it was invented by the patentee.

The patent applicant in Eckhardt argued that Bartholomew’s disclosure was insufficient to establish anticipation of the compositional components of the claims at issue.

The PTAB noted that

[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account.

The case involved a range of specifications. For example, one of the claims recited

A multilayer PSA assembly comprising: i. a propylheptyl acrylate adhesive copolymer layer comprising: a) from 50 to 99.5 weight percent of 2-propylheptyl acrylate as a first monomer; b) from 1.0 to 50 weight percent of a second non-polar monomer; c) from 0.1 to 15 weight percent of a third polar acrylate monomer; and d) a tackifying resin in an amount from 3 to 100 parts per 100 parts of the copolymer, wherein the tackifying resin is selected from the group consisting of C5-based hydrocarbon resins, C9-based hydrocarbon resins, C5/C9-based hydrocarbon resins, and any combinations or mixtures thereof; wherein the weight percentages are based on the total weight of the copolymer; …

The PTAB noted that

Bartholomew teaches or suggests all of the components of the claimed multilayer PSA assembly …. Bartholomew further teaches ranges for the amounts of the 2-propylheptyl acrylate, the second non-polar monomer (e.g., isobornylacrylate), and the third polar acrylate monomer (e.g., acrylic acid) that overlap the recited ranges for these components as set out in claims 16, 37 and 38…

The PTAB pointed out that

Where the difference between the claimed invention and the prior art is some range or other variable within the claims, Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.

Thus, the PTAB reversed the rejection of the patent claims, finding that

The § 102(a) rejections of independent claims 16, 37, and 38 on appeal rely upon picking and choosing from various lists in Bartholomew. A preponderance of the evidence supports Appellant’s position that Bartholomew’s disclosure is insufficient to establish anticipation of the compositional components of independent claims 16, 37, and 38.


Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here.

Related Articles

Just Because It’s on the Internet Doesn’t Mean It’s “Publicly Accessible”

The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to ...
Read More

Trademark Denied for “ChatGPT”

The US Patent and Trademark Office (USPTO) has denied OpenAI’s applications to trademark “ChatGPT” and “GPT.” The Final Office Action states, “Registration is refused because the applied-for mark ...
Read More

Federal Circuit: “Improving User Experience” Isn’t Patentable

The Federal Circuit has affirmed a lower court decision that patent claims for methods and systems for improving how search results are displayed to users ...
Read More

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

SERVICES

PROTECT

DEAL

DEFEND