New ground of rejection
From Patentbarquestions
37. Applicant filed an application containing a claim directed to a polishing wheel coated with diamond grit particles.
The application discloses, but does not claim, a diamond grit particle size of 5-7 microns. The examiner rejected the
claim under 35 USC 102(b) as being anticipated by a U.S. patent which disclosed as its invention a polishing wheel in
accordance with the claim of the application but coated with glass grit particles instead of diamond grit particles.
The applied patent, which issued more than 1 year prior to the effective filing date of the application, also disclosed
that diamond grit particles were known for coating on polishing wheels but were inferior to glass grit particles because
they were more expensive and did not adhere as well to the polishing wheel. The applied patent disclosed a grit particle
size of 50-100 microns. Which of the following timely taken courses of action would comply with the patent laws, rules
and procedures as related in the MPEP for overcoming the rejection?
(A) Argue that the patent teaches away from the use of a diamond grit particle coating on a polishing wheel and thus
does not teach the claimed invention.
(B) File a declaration under 37 CFR 1.132 showing unexpected results using diamond grit rather than glass grit.
(C) Antedate the applied patent by filing a declaration under 37 CFR 1.131 showing that applicant invented the claimed
subject matter prior to the effective date of the applied patent.
(D) Argue the applied patent is nonanalogous art.
(E) Amend the claim by adding a limitation that the diamond grit particle size is 5-7 microns, and arguing
that the claimed invention differs from applied patent by limited the diamond grit particle size to 5-7 microns.
37. ANSWER: (E) is the correct answer. 35 U.S.C. § 102(b); 37 CFR § 1.111(b); MPEP §§ 706.02(b), 2131 and 2131.03. As stated in MPEP 2131, under the heading “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim,” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). MPEP 2131.03, under the heading, “Prior Art Which Teaches A Range Within, Overlapping, Or Touching The Claimed Range Anticipates If The Prior Art Range Discloses The Claimed Range With ‘Sufficient Specificity.’” states “When the prior art discloses a range which touches, overlaps or is within the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with ‘sufficient specificity to constitute an anticipation under the statute.’” A claim containing a limitation that the grit particle size is 5-7 microns would not be anticipated by the applied reference, because the applied reference discloses a different grit particle size well outside that range. (A) is incorrect. MPEP § 2123(8th Ed.). Patents are relevant as prior art for all they contain and are not limited to their preferred embodiments. See In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) and Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). (B) is incorrect. See MPEP § 2131.04. Evidence of secondary considerations such as unexpected results is irrelevant to 35 U.S.C. § 102 rejections and thus cannot overcome a rejection so based. See In re Wiggins, 488 F.2d 538, 543,179 USPQ 421, 425 (CCPA 1973). (C) is incorrect. See MPEP § 715, under the heading “Situations Where 37 CFR 1.131 Affidavits or Declarations Are Inappropriate.” An affidavit or declaration under 37 CFR § 1.131 is inappropriate where the reference publication date is more than 1 year prior to applicant’s effective filing date. Such a reference is a “statutory bar” under 35 U.S.C. § 102(b) as referenced in 37 CFR § 1.131(a)(2). (D) is also incorrect. See MPEP § 2131.05. Arguments that the alleged anticipatory prior art is “nonanalogous art” are not “germane” to a rejection under 35 U.S.C. § 102. Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982).
