Whither The CCPA? The Influence Of CCPA Decisions On Anticipation

• Published date: 04 July 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Emma N. Ng, Caitlin E. O'Connell, Brady Nash, Angeline Premraj and Amanda Murphy

Introduction

One of the requirements for patentability under United States law is novelty, as prescribed by 35 U.S.C. ' 102. Under ' 102, an invention is eligible for patent if it is not anticipated by prior art. Anticipation occurs when 'each and every limitation of [a] claimed invention [is] disclosed in a single prior art reference,' In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see also In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) ('[A] lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the 'ultimate or epitome of obviousness.'') (citation omitted).. In other words, ' 102 prevents an applicant from obtaining a patent if the claimed invention is not new or novel.

The Leahy-Smith American Invents Act ('AIA') passed in 2011 overhauled the United States Patent law system by revising what constitutes prior art. Compare pre-AIA 35 U.S.C. ' 102 with AIA 35 U.S.C. ' 102; see also MPEP ' 2151. Despite the AIA changes, the principles of determining whether prior art anticipates an invention remained unchanged. Thus, in addition to considering recent patent law jurisprudence, practitioners would be remiss to ignore the precedent established by the United States Court of Customs and Patent Appeals ('CCPA') related to anticipation.

This article summarizes key CCPA decisions that continue to hold merit and remain binding precedent that should be considered when strategizing for anticipation inquiries under ' 102.¹

Case Summaries

In re Slayter, 276 F.2d 408 (CCPA 1960)

In In re Slayter, an applicant appealed an examiner's rejection that the claimed invention was anticipated. The applicant argued that polyphase materials were not anticipated by the prior art because the metal fibers in the prior art served to hold the glass together and there was no disclosure of the use of fibers to prevent cracking. In rejecting the applicant's arguments, the CCPA explained that 'That distinction is not brought out in the claims and, moreover, appears to involve, at best, only a matter of degree. . . . It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.' Id. at 411 (citations omitted)

In re Sivaramakrishnan, 673 F.2d 1383 (CCPA 1982)

In In re Sivaramakrishnan, an applicant appealed an examiner's rejection that a claimed...