Chapter §7.02 Anticipation

JurisdictionUnited States

§7.02 Anticipation

[A] Definition

The statutory requirement of novelty reflects the bedrock patent law principle that in order to be patented, an invention must be new (as well as nonobvious and useful). When one or more of the novelty provisions of §102 applies to the subject matter of a patent claim, the claimed invention has been "anticipated." When an invention has been anticipated, it is old, rather than novel, and thus unpatentable. In other words, anticipation is the opposite (or absence or destruction or negation) of novelty.

[B] Strict Identity Rule

Section 102 uses the word "invention" in two senses: to refer to the anticipatory prior art invention and to the applicant's invention for which a patent is being sought (or in federal district court litigation challenging validity, the invention of the patent in suit). The necessary relationship between these two inventions in an anticipation analysis must be one of strict identity.50 The strict identity rule states that in order to evidence anticipation of a claimed invention under 35 U.S.C. §102, a single prior art reference must disclose every element of that invention, arranged as in the claim.51

[1] "Four Corners"/Single Reference Rule

The strict identity rule includes within it the notion that a single prior art document or event shows every limitation of the claimed invention. This is the general rule, subject to exceptions discussed below.52 Another way of expressing the single reference rule is to state that for the prior art to anticipate a claimed invention, every limitation of the invention must be described within the "four corners" of one prior art reference.53

For example, consider a patent claim that recites "a widget comprising part A attached to part B by means of part C." The claim is not anticipated by a combination of two prior art references (e.g., earlier printed publications or patents) in which one reference teaches a widget having part A attached to part B by means of a part D, and a second reference teaches that part D is considered equivalent to or interchangeable with part C by those of ordinary skill in the art of widgets. This combination of prior art references may very well support the position that the claimed widget would have been obvious under 35 U.S.C. §103 (assuming some reason for combining the teachings of the two references), but the claimed widget has not been anticipated in this example because the single reference/four corners rule has not been satisfied. Thus, the claimed widget is novel, if not, perhaps, nonobvious.54

[2] "Arranged as in the Claim"

[a] Generally

A more comprehensive statement of the single reference rule requires that to anticipate, a single reference describe every element of the claimed invention, "arranged as in the claim."55 "In other words, a prior art reference anticipates a claim only if it discloses all the elements 'in the same form and order as in the claim.' "56 The Federal Circuit finds the genesis of this rule in Supreme Court precedent;57 in 1892 the Court in Topliff v. Topliff stated that "[i]t is not sufficient to constitute an anticipation that the [prior art] device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions."58

The "arranged as in the claim" aspect of the single reference rule was not satisfied in Net MoneyIN, Inc. v. VeriSign, Inc.59 Net MoneyIN's patent claimed an Internet payment system comprising five "links."60 A district court found the claimed system anticipated by a single prior art reference that disclosed all five links, but in two separate examples within the reference. In other words, the reference did not contain a single example describing a system having all five links. The district court concluded that "[a] simple combination would produce the system described in [the claim at issue]. That no specific example within [the prior art reference] contains all five links does not preclude a finding of anticipation."61

The Federal Circuit reversed on this point, emphasizing the exacting nature of the anticipation test. The appellate court instructed that its "precedent informs that the 'arranged as in the claim' requirement applies to all claims and refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order [as in a method claim with ordered steps]. The test is thus more accurately understood to mean 'arranged or combined in the same way as in the claim.' "62

The district court had erred by combining parts of two separate protocols shown in the reference to find anticipation. Although the differences between the protocols disclosed in the reference and the claimed system were admittedly slight, these differences invoked the question of obviousness under §103 rather than anticipation under §102.63 Because the district court had erred in finding anticipation by "combining different parts of the separate protocols in the [] reference simply because they were found within the four corners of the document,"64 the Federal Circuit reversed the grant of summary judgment of invalidity.

[b] Reference Not Anticipatory If It Must Be Distorted

In its March 2017 decision In re Chudik,65 the Federal Circuit reversed the PTAB's determination that Chudik's application claims were anticipated by two different prior art references. To find anticipation, the Board had to improperly distort the teachings of each cited reference; in one case, this distortion required "tearing the invention apart."66 The Chudik decision illustrates that "[p]rior art that 'must be distorted from its obvious design' does not anticipate a new invention."67

Chudik sought to patent a type of implant for shoulder replacement surgery. The invention disclosed in his U.S. Patent Application No. 11/525,631 ('631 application) sought to improve on the prior art by offering "simple and less invasive perpendicular access to the humeral and glenoid joint surfaces," which "spares the rotator cuff tendons and allows for a quicker and more functional recovery."

The site of the implant—the glenoid cavity—faces outward on the scapula, which is the shoulder bone that connects the humerus (upper arm bone) to the clavicle (collar bone). Chudik's specification described a shoulder replacement surgery involving (1) removing (termed "reaming") a minimal amount of bone from the peripheral surface of the glenoid, and (2) placing an implant in the reamed cavity. Figures from the '631 application, shown herein collectively as Figure 7-1, disclosed that the glenoid cavity 22 faces outward on the scapula; that the reamer instrument shown in application Figure 21 has a reaming surface 114 that faces toward the glenoid cavity as shown in application Figure 22; and that after the glenoid cavity has been reamed, the protruding surface 119 of the implant shown in application Figures 23a and 23b "sits within the concavity of the reamed glenoid surface." Importantly, both the reaming surface 114 and the protruding implant surface 119 are shown facing toward the glenoid cavity.

FIGURE 7-1. Depiction of Claimed Shoulder Implant in Chudik

Chudik's independent claims 1 and 40 were representative of his '631 application claims. Both claims required a glenoid implant having an implant surface "arranged to engage" the surface of the cavity formed by reaming the glenoid.68

The Chudik case illustrates two separate, improper distortions of prior art by the USPTO. First, the Board had agreed with the USPTO examiner that a Bouttens reference (i.e., PCT International Publication Number WO 01/47442 A1 (July 5, 2001) ("Bouttens")) anticipated Chudik's application claim 40. Recall that claim 40 required the protruding surface of Chudik's implant be "arranged to engage" the surface of the cavity formed by reaming the glenoid. Like Chudik, the Bouttens reference disclosed a shoulder prosthesis assembly for implantation in the glenoid. However, Figure 1 of Bouttens (shown as Figure 7-2 herein) depicted the protruding surface 11 of the Bouttens implant facing away from the glenoid cavity and toward the humerus. Bouttens also showed screws 8, for attaching the implant to the glenoid region, on the opposite side of the protruding implant surface. In contrast, Figure 27a of the Chudik application (depicted in Figure 7-1 supra) showed screws 133 and 135 emanating from the protruding implant surface 119.

FIGURE 7-2. Bouttens Prior Art Reference in Chudik

Affirming the examiner, the Board had reasoned that Bouttens anticipated Chudik's application claim 40 because Bouttens' surface 11 was not " 'structurally incapable of engaging a glenoid cavity that matches its protruding profile,' " and because " 'the [Chudik] Specification conveys that the cavity can have 'any' shape that matches that of the protruding surface.' "69

The Federal Circuit in Chudik rejected the Board's radical modification of Bouttens to establish anticipation. The Board's reasoning made sense only "if the user rotates Bouttens 180 degrees, thereby rendering the protruding surface 11 capable of engaging the glenoid cavity instead of the humerus."70 Such rotation would require relocating the screws 8 for Bouttens to remain operable. "This endeavor would constitute a significant and impermissible modification" of the allegedly anticipatory prior art reference.71 Hence, the Circuit reversed the Board's finding of anticipation by Bouttens as not supported by substantial evidence; the Board had "failed to describe how a user could rotate Bouttens without modification while continuing 'to accomplish the function performed by' the '631 application."72

In its second error involving improper modification of the prior art, the Board had agreed with the examiner that a Rambert reference (i.e., French Patent...

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