data/2100/s2131.html.txt

[
# 2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017]


 A claimed invention may be rejected under **[35 U.S.C.
 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** when the invention is anticipated (or is "not novel") over a
 disclosure that is available as prior art. To reject a claim as anticipated by a reference,
 the disclosure must teach every element required by the claim under its broadest reasonable
 interpretation. See, e.g., **[MPEP § 2114](s2114.html#d0e201520)**, subsections II and IV.
 


"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). "When a claim covers several structures or
 compositions, either generically or as alternatives, the claim is deemed anticipated if any
 of the structures or compositions within the scope of the claim is known in the prior art."
 *Brown v. 3M,* 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir.
 2001) (claim to a system for setting a computer clock to an offset time to address the Year
 2000 (Y2K) problem, applicable to records with year date data in "at least one of
 two-digit, three-digit, or four-digit" representations, was held anticipated by a system
 that offsets year dates in only two-digit formats). See also **[MPEP § 2131.02](s2131.html#d0e203166)**. "The
 identical invention must be shown in as complete detail as is contained in the ... claim."
 *Richardson v. Suzuki Motor Co.,* 868 F.2d 1226, 1236, 9 USPQ2d 1913,
 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is
 not an *ipsissimis verbis* test, i.e., identity of terminology is not
 required. *In re Bond,* 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
 Note that, in some circumstances, it is permissible to use multiple references in a
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)** rejection. See **[MPEP § 2131.01](s2131.html#d0e203057)**.
 



# 2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]


Normally, only one reference should be used in making a rejection under
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)**. However, a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection over
 multiple references has been held to be proper when the extra references are cited
 to:
 


* (A) Prove the primary reference contains an "enabled disclosure;"
* (B) Explain the meaning of a term used in the primary reference; or
* (C) Show that a characteristic not disclosed in the reference is
 inherent.


See subsections I-III below for more explanation of each
 circumstance.
 

**I.** **TO PROVE REFERENCE CONTAINS AN "ENABLED DISCLOSURE"*****Extra References and Extrinsic Evidence Can Be Used To Show the
 Primary Reference Contains an "Enabled Disclosure"***When the claimed composition or machine is disclosed identically
 by the reference, an additional reference may be relied on to show that the
 primary reference has an "enabled disclosure." *In re Samour,* 571 F.2d 559, 197 USPQ 1 (CCPA 1978) and *In re
 Donohue,* 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (Compound claims
 were rejected under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** over
 a publication in view of two patents. The publication disclosed the claimed
 compound structure while the patents taught methods of making compounds of that
 general class. The applicant argued that there was no motivation to combine the
 references because no utility was previously known for the compound and that the
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)** rejection over multiple references was improper. The
 court held that the publication taught all the elements of the claim and thus
 motivation to combine was not required. The patents were only submitted as
 evidence of what was in the public's possession before applicant’s invention.).
 
 

**II.** **TO EXPLAIN THE MEANING OF A TERM USED IN THE PRIMARY REFERENCE*****Extra References or Other Evidence Can Be Used to Show Meaning of a
 Term Used in the Primary Reference***Extrinsic evidence may be used to explain but not expand the
 meaning of terms and phrases used in the reference relied upon as anticipatory of
 the claimed subject matter. *In re Baxter Travenol**Labs.,* 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Baxter
 Travenol Labs. invention was directed to a blood bag system incorporating a bag
 containing DEHP, an additive to the plastic which improved the bag’s red blood
 cell storage capability. The examiner rejected the claims over a technical
 progress report by Becker which taught the same blood bag system but did not
 expressly disclose the presence of DEHP. The report, however, did disclose using
 commercial blood bags. It also disclosed the blood bag system as "very similar to
 [Baxter] Travenol’s commercial two bag blood container." Extrinsic evidence
 (depositions, declarations and Baxter Travenol’s own admissions) showed that
 commercial blood bags, at the time Becker’s report was written, contained DEHP.
 Therefore, one of ordinary skill in the art would have known that "commercial
 blood bags" meant bags containing DEHP. The claims were thus held to be
 anticipated.).
 

**III.** **TO SHOW THAT A CHARACTERISTIC NOT DISCLOSED IN THE REFERENCE IS INHERENT** ***Extra Reference or Evidence Can Be Used To Show an Inherent
 Characteristic of the Thing Taught by the Primary Reference***"To serve as an anticipation when the reference is silent about
 the asserted inherent characteristic, such gap in the reference may be filled with
 recourse to extrinsic evidence. Such evidence must make clear that the missing
 descriptive matter is necessarily present in the thing described in the reference,
 and that it would be so recognized by persons of ordinary skill."
 *Continental Can Co. USA v. Monsanto Co.,* 948 F.2d 1264,
 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (The court went on to explain that
 "this modest flexibility in the rule that ‘anticipation’ requires that every
 element of the claims appear in a single reference accommodates situations in
 which the common knowledge of technologists is not recorded in the reference; that
 is, where technological facts are known to those in the field of the invention,
 albeit not known to judges." 948 F.2d at 1268, 20 USPQ at 1749-50.). Note that as
 long as there is evidence of record establishing inherency, failure of those
 skilled in the art to contemporaneously recognize an inherent property, function
 or ingredient of a prior art reference does not preclude a finding of
 anticipation. *Atlas Powder Co. v. IRECO, Inc.,* 190 F.3d 1342,
 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Two prior art references disclosed
 blasting compositions containing water-in-oil emulsions with identical ingredients
 to those claimed, in overlapping ranges with the claimed composition. The only
 element of the claims arguably not present in the prior art compositions was
 "sufficient aeration . . . entrapped to enhance sensitivity to a substantial
 degree." The Federal Circuit found that the emulsions described in both references
 would inevitably and inherently have "sufficient aeration" to sensitize the
 compound in the claimed ranges based on the evidence of record (including test
 data and expert testimony). This finding of inherency was not defeated by the fact
 that one of the references taught away from air entrapment or purposeful
 aeration.). See also *In re King,* 801 F.2d 1324, 1327, 231 USPQ
 136, 139 (Fed. Cir. 1986); *Titanium Metals Corp. v. Banner,* 778
 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985). See **[MPEP § 2112](s2112.html#d0e201036)** -
 **[§
 2112.02](s2112.html#d0e201360)** for case law on inherency. Also note that the
 critical date of extrinsic evidence showing a universal fact need not antedate the
 filing date. See **[MPEP § 2124](s2124.html#d0e202094)**. 
 




# 2131.02 Genus-Species Situations [R-08.2017]

**I.** **A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS**"A generic claim cannot be allowed to an applicant if the prior art
 discloses a species falling within the claimed genus." The species in that case will
 anticipate the genus. *In re Slayter,* 276 F.2d 408, 411, 125 USPQ
 345, 347 (CCPA 1960); *In re Gosteli,* 872 F.2d 1008, 10 USPQ2d 1614
 (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic
 thia-aza compounds in Markush claims. The prior art reference applied against the
 claims disclosed two of the chemical species. The parties agreed that the prior art
 species would anticipate the claims unless applicant was entitled to his foreign
 priority date.).
 

**II.** **A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO
 MATTER HOW MANY OTHER SPECIES ARE NAMED**A genus does not always anticipate a claim to a species within the
 genus. However, when the species is clearly named, the species claim is anticipated
 no matter how many other species are additionally named. See *Ex
 parte**A,* 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed
 compound was named in a reference which also disclosed 45 other compounds. The Board
 held that the comprehensiveness of the listing did not negate the fact that the
 compound claimed was specifically taught. The Board compared the facts to the
 situation in which the compound was found in the *Merck Index,*
 saying that "the tenth edition of the *Merck Index* lists ten
 thousand compounds. In our view, each and every one of those compounds is ‘described’
 as that term is used in **[[pre-AIA] 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**, in
 that publication."). *Id.* at 1718. See also  *In re
 Sivaramakrishnan,* 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims
 were directed to polycarbonate containing cadmium laurate as an additive. The court
 upheld the Board’s finding that a reference specifically naming cadmium laurate as an
 additive amongst a list of many suitable salts in polycarbonate resin anticipated the
 claims. The applicant had argued that cadmium laurate was only disclosed as
 representative of the salts and was expected to have the same properties as the other
 salts listed while, as shown in the application, cadmium laurate had unexpected
 properties. The court held that it did not matter that the salt was not disclosed as
 being preferred, the reference still anticipated the claims and because the claim was
 anticipated, the unexpected properties were immaterial.).
 

**III.** **A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT
 DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE** "[W]hether a generic disclosure necessarily
 anticipates everything within the genus … depends on the factual aspects of the
 specific disclosure and the particular products at issue." *Sanofi-Synthelabo
 v. Apotex, Inc.,* 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir.
 2008). See also *Osram Sylvania Inc. v. American Induction Tech.
 Inc.,* 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) ("how
 one of ordinary skill in the art would understand the relative size of a genus or
 species in a particular technology is of critical importance").
 


A reference disclosure can anticipate a claim even if
 the reference does not describe "the limitations arranged or combined as in the
 claim, if a person of skill in the art, reading the reference, would ‘at once
 envisage’ the claimed arrangement or combination." *Kennametal, Inc. v.
 Ingersoll Cutting Tool Co.,* 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254
 (Fed. Cir. 2015) (quoting *In re Petering,* 301 F.2d 676, 681(CCPA
 1962)). In *Kennametal,* the challenged claim was to a cutting tool
 requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating.
 Claim 5 of the reference disclosed all the elements of the claimed coated cutting
 tool, however, ruthenium was one of five specified binding agents and the claim did
 not specify a particular coating technique. The specification of the reference
 disclosed PVD as one of three suitable coating techniques. The Federal Circuit stated
 that the reference’s "express ‘contemplat[ion]’ of PVD coatings provided sufficient
 evidence that a reasonable mind could find that a person of skill in the art… would
 immediately envisage applying a PVD coating. Thus, substantial evidence supports the
 Board's conclusion that [the reference] effectively teaches 15 combinations, of which
 one anticipates pending claim 1. Though it is true that there is no evidence in [the
 reference] of ‘actual performance’ of combining the ruthenium binder and PVD
 coatings, this is not required." *Kennametal,* 780 F.3d at 1383, 114
 USPQ2d at 1255 (citations omitted).
 


When a claimed compound is not specifically named in a reference,
 but instead it is necessary to select portions of teachings within the reference and
 combine them, e.g., select various substituents from a list of alternatives given for
 placement at specific sites on a generic chemical formula to arrive at a specific
 composition, anticipation can only be found if the classes of substituents are
 sufficiently limited or well delineated. *Ex parte A,* 17 USPQ2d
 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able
 to "at once envisage" the specific compound within the generic chemical formula, the
 compound is anticipated. One of ordinary skill in the art must be able to draw the
 structural formula or write the name of each of the compounds included in the generic
 formula before any of the compounds can be "at once envisaged." One may look to the
 preferred embodiments to determine which compounds can be anticipated. *In re
 Petering,* 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
 


In *In re Petering,* the prior art disclosed a
 generic chemical formula "wherein X, Y, Z, P, and R'-
 represent either hydrogen or alkyl radicals, R a side chain containing an OH group."
 The court held that this formula, without more, could not anticipate a claim to
 7-methyl-9-[d, l'-ribityl]-isoalloxazine because the
 generic formula encompassed a vast number and perhaps even an infinite number of
 compounds. However, the reference also disclosed preferred substituents for X, Y, Z,
 P, R, and R' as follows: where X, P, and
 R' are hydrogen, where Y and Z may be hydrogen or
 methyl, and where R is one of eight specific isoalloxazines. The court determined
 that this more limited generic class consisted of about 20 compounds. The limited
 number of compounds covered by the preferred formula in combination with the fact
 that the number of substituents was low at each site, the ring positions were
 limited, and there was a large unchanging structural nucleus, resulted in a finding
 that the reference sufficiently described "each of the various permutations here
 involved as fully as if he had drawn each structural formula or had written each
 name." The claimed compound was 1 of these 20 compounds. Therefore, the reference
 "described" the claimed compound and the reference anticipated the claims.
 


In *In re Schauman,* 572 F.2d 312, 197 USPQ 5 (CCPA
 1978), claims to a specific compound were anticipated because the prior art taught a
 generic formula embracing a limited number of compounds closely related to each other
 in structure and the properties possessed by the compound class of the prior art was
 that disclosed for the claimed compound. The broad generic formula seemed to describe
 an infinite number of compounds but claim 1 was limited to a structure with only one
 variable substituent R. This substituent was limited to low alkyl radicals. One of
 ordinary skill in the art would at once envisage the subject matter within claim 1 of
 the reference. 
 


Compare *In re Meyer,* 599 F.2d 1026, 202 USPQ 175
 (CCPA 1979) (A reference disclosing "alkaline chlorine or bromine solution" embraces
 a large number of species and cannot be said to anticipate claims to "alkali metal
 hypochlorite."); *Akzo N.V.**v.**International Trade Comm’n,* 808 F.2d 1471, 1 USPQ2d 1241 (Fed.
 Cir. 1986) (Claims to a process for making aramid fibers using a 98% solution of
 sulfuric acid were not anticipated by a reference which disclosed using sulfuric acid
 solution but which did not disclose using a 98% concentrated sulfuric acid
 solution.). See **[MPEP §
 2144.08](s2144.html#d0e211596)** for a discussion of obviousness in genus-species
 situations.
 




# 2131.03 Anticipation of Ranges [R-10.2019]

**I.** **A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE
 ANTICIPATES THE RANGE**"[W]hen, as by a recitation of ranges or otherwise, a claim covers
 several compositions, the claim is ‘anticipated’ if *one* of them is
 in the prior art." *Titanium Metals Corp.**v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing
 *In re**Petering,* 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
 (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and
 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on
 Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a
 Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed
 range of compositions.).
 

**II.** **PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE
 ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT
 SPECIFICITY"**When the prior art discloses a range which touches or overlaps 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." What
 constitutes a "sufficient specificity" is fact dependent. If the claims are directed
 to a narrow range, and the reference teaches a broader range, other facts of the
 case, must be considered when determining whether the narrow range is disclosed with
 "sufficient specificity" to constitute an anticipation of the claims. Compare
 *ClearValue Inc. v. Pearl River Polymers Inc.,* 668 F.3d 1340,
 101 USPQ2d 1773 (Fed. Cir. 2012) with *Atofina v. Great Lakes Chem.
 Corp,* 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
 


In *ClearValue,* the claim at issue
 was directed to a process of clarifying water with alkalinity below 50 ppm, whereas
 the prior art taught that the same process works for systems with alkalinity of 150
 ppm or less. In holding the claim anticipated, the court observed that "there is no
 allegation of criticality or any evidence demonstrating any difference across the
 range." *Id.* at 1345, 101 USPQ2d at 1777. In
 *Atofina,* the court held that a reference temperature range of
 100-500 degrees C did not describe the claimed range of 330-450 degrees C with
 sufficient specificity to be anticipatory, even though there was a slight overlap
 between the reference’s preferred range (150-350 degrees C) and the claimed range.
 "[T]he disclosure of a range is no more a disclosure of the end points of the range
 than it is each of the intermediate points." *Id.* at 1000, 78
 USPQ2d at 1424. Patentee described claimed temperature range as "critical" to enable
 the process to operate effectively, and showed that one of ordinary skill would have
 expected the synthesis process to operate differently outside the claimed range. 
 


If the prior art disclosure does not disclose a
 claimed range with "sufficient specificity" to anticipate a claimed invention, any
 evidence of unexpected results within the narrow range may render the claims
 nonobvious. See **[MPEP §
 716.02](s716.html#d0e92844)***et seq.* The question of "sufficient specificity" is similar to
 that of "clearly envisaging" a species from a generic teaching. See
 **[MPEP
 § 2131.02](s2131.html#d0e203166)**. 
 


A **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
 **[103](mpep-9015-appx-l.html#d0e302450)** combination rejection is permitted if it is unclear if the
 reference teaches the range with "sufficient specificity." The examiner must, in this
 case, provide reasons for anticipation as well as a reasoned statement regarding
 obviousness. *Ex parte Lee,* 31 USPQ2d 1105 (Bd. Pat. App. &
 Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see
 **[MPEP
 § 2144.05](s2144.html#d0e211255)**.
 

**III.** **PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT
 OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE**"[A]nticipation under **[§ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** which takes differences into account." *Titanium
 Metals Corp. v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
 (Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were
 not anticipated by, although they were held obvious over, a graph in a Russian
 article on Ti-Mo-Ni alloys in which the graph contained an actual data point
 corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).
 




# 2131.04 Secondary Considerations [R-08.2012]


Evidence of secondary considerations, such as unexpected results or
 commercial success, is irrelevant to **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejections and thus
 cannot overcome a rejection so based. *In re Wiggins,* 488 F.2d 538,
 543, 179 USPQ 421, 425 (CCPA 1973).
 




# 2131.05 Nonanalogous or Disparaging Prior Art [R-08.2012]


"Arguments that the alleged anticipatory prior art is ‘nonanalogous
 art’ or ‘teaches away from the invention’ or is not recognized as solving the problem
 solved by the claimed invention, [are] not ‘germane’ to a rejection under
 **[section
 102](mpep-9015-appx-l.html#d0e302383)**." *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)). See also
 *State Contracting & Eng’ g Corp. v. Condotte America, Inc.,*
 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a
 reference is analogous art is not relevant to whether that reference anticipates. A
 reference may be directed to an entirely different problem than the one addressed by the
 inventor, or may be from an entirely different field of endeavor than that of the
 claimed invention, yet the reference is still anticipatory if it explicitly or
 inherently discloses every limitation recited in the claims.).
 


A reference is no less anticipatory if, after disclosing the invention,
 the reference then disparages it. The question whether a reference "teaches away" from
 the invention is inapplicable to an anticipation analysis. *Celeritas
 Technologies Ltd. v. Rockwell International Corp.,* 150 F.3d 1354, 1361, 47
 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims
 even though it taught away from the claimed invention. "The fact that a modem with a
 single carrier data signal is shown to be less than optimal does not vitiate the fact
 that it is disclosed."). See *Upsher-Smith Labs. v. Pamlab, LLC,* 412
 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that
 expressly excluded an ingredient held anticipated by reference composition that
 optionally included that same ingredient); see also *Atlas Powder Co. v. IRECO,
 Inc.,* 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed
 composition was anticipated by prior art reference that inherently met claim limitation
 of "sufficient aeration" even though reference taught away from air entrapment or
 purposeful aeration.).
 



[[top]](#top)


, 
# 2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]


Normally, only one reference should be used in making a rejection under
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)**. However, a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection over
 multiple references has been held to be proper when the extra references are cited
 to:
 


* (A) Prove the primary reference contains an "enabled disclosure;"
* (B) Explain the meaning of a term used in the primary reference; or
* (C) Show that a characteristic not disclosed in the reference is
 inherent.


See subsections I-III below for more explanation of each
 circumstance.
 

**I.** **TO PROVE REFERENCE CONTAINS AN "ENABLED DISCLOSURE"*****Extra References and Extrinsic Evidence Can Be Used To Show the
 Primary Reference Contains an "Enabled Disclosure"***When the claimed composition or machine is disclosed identically
 by the reference, an additional reference may be relied on to show that the
 primary reference has an "enabled disclosure." *In re Samour,* 571 F.2d 559, 197 USPQ 1 (CCPA 1978) and *In re
 Donohue,* 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (Compound claims
 were rejected under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** over
 a publication in view of two patents. The publication disclosed the claimed
 compound structure while the patents taught methods of making compounds of that
 general class. The applicant argued that there was no motivation to combine the
 references because no utility was previously known for the compound and that the
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)** rejection over multiple references was improper. The
 court held that the publication taught all the elements of the claim and thus
 motivation to combine was not required. The patents were only submitted as
 evidence of what was in the public's possession before applicant’s invention.).
 
 

**II.** **TO EXPLAIN THE MEANING OF A TERM USED IN THE PRIMARY REFERENCE*****Extra References or Other Evidence Can Be Used to Show Meaning of a
 Term Used in the Primary Reference***Extrinsic evidence may be used to explain but not expand the
 meaning of terms and phrases used in the reference relied upon as anticipatory of
 the claimed subject matter. *In re Baxter Travenol**Labs.,* 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Baxter
 Travenol Labs. invention was directed to a blood bag system incorporating a bag
 containing DEHP, an additive to the plastic which improved the bag’s red blood
 cell storage capability. The examiner rejected the claims over a technical
 progress report by Becker which taught the same blood bag system but did not
 expressly disclose the presence of DEHP. The report, however, did disclose using
 commercial blood bags. It also disclosed the blood bag system as "very similar to
 [Baxter] Travenol’s commercial two bag blood container." Extrinsic evidence
 (depositions, declarations and Baxter Travenol’s own admissions) showed that
 commercial blood bags, at the time Becker’s report was written, contained DEHP.
 Therefore, one of ordinary skill in the art would have known that "commercial
 blood bags" meant bags containing DEHP. The claims were thus held to be
 anticipated.).
 

**III.** **TO SHOW THAT A CHARACTERISTIC NOT DISCLOSED IN THE REFERENCE IS INHERENT** ***Extra Reference or Evidence Can Be Used To Show an Inherent
 Characteristic of the Thing Taught by the Primary Reference***"To serve as an anticipation when the reference is silent about
 the asserted inherent characteristic, such gap in the reference may be filled with
 recourse to extrinsic evidence. Such evidence must make clear that the missing
 descriptive matter is necessarily present in the thing described in the reference,
 and that it would be so recognized by persons of ordinary skill."
 *Continental Can Co. USA v. Monsanto Co.,* 948 F.2d 1264,
 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (The court went on to explain that
 "this modest flexibility in the rule that ‘anticipation’ requires that every
 element of the claims appear in a single reference accommodates situations in
 which the common knowledge of technologists is not recorded in the reference; that
 is, where technological facts are known to those in the field of the invention,
 albeit not known to judges." 948 F.2d at 1268, 20 USPQ at 1749-50.). Note that as
 long as there is evidence of record establishing inherency, failure of those
 skilled in the art to contemporaneously recognize an inherent property, function
 or ingredient of a prior art reference does not preclude a finding of
 anticipation. *Atlas Powder Co. v. IRECO, Inc.,* 190 F.3d 1342,
 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Two prior art references disclosed
 blasting compositions containing water-in-oil emulsions with identical ingredients
 to those claimed, in overlapping ranges with the claimed composition. The only
 element of the claims arguably not present in the prior art compositions was
 "sufficient aeration . . . entrapped to enhance sensitivity to a substantial
 degree." The Federal Circuit found that the emulsions described in both references
 would inevitably and inherently have "sufficient aeration" to sensitize the
 compound in the claimed ranges based on the evidence of record (including test
 data and expert testimony). This finding of inherency was not defeated by the fact
 that one of the references taught away from air entrapment or purposeful
 aeration.). See also *In re King,* 801 F.2d 1324, 1327, 231 USPQ
 136, 139 (Fed. Cir. 1986); *Titanium Metals Corp. v. Banner,* 778
 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985). See **[MPEP § 2112](s2112.html#d0e201036)** -
 **[§
 2112.02](s2112.html#d0e201360)** for case law on inherency. Also note that the
 critical date of extrinsic evidence showing a universal fact need not antedate the
 filing date. See **[MPEP § 2124](s2124.html#d0e202094)**. 
 


, 
# 2131.02 Genus-Species Situations [R-08.2017]

**I.** **A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS**"A generic claim cannot be allowed to an applicant if the prior art
 discloses a species falling within the claimed genus." The species in that case will
 anticipate the genus. *In re Slayter,* 276 F.2d 408, 411, 125 USPQ
 345, 347 (CCPA 1960); *In re Gosteli,* 872 F.2d 1008, 10 USPQ2d 1614
 (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic
 thia-aza compounds in Markush claims. The prior art reference applied against the
 claims disclosed two of the chemical species. The parties agreed that the prior art
 species would anticipate the claims unless applicant was entitled to his foreign
 priority date.).
 

**II.** **A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO
 MATTER HOW MANY OTHER SPECIES ARE NAMED**A genus does not always anticipate a claim to a species within the
 genus. However, when the species is clearly named, the species claim is anticipated
 no matter how many other species are additionally named. See *Ex
 parte**A,* 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed
 compound was named in a reference which also disclosed 45 other compounds. The Board
 held that the comprehensiveness of the listing did not negate the fact that the
 compound claimed was specifically taught. The Board compared the facts to the
 situation in which the compound was found in the *Merck Index,*
 saying that "the tenth edition of the *Merck Index* lists ten
 thousand compounds. In our view, each and every one of those compounds is ‘described’
 as that term is used in **[[pre-AIA] 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**, in
 that publication."). *Id.* at 1718. See also  *In re
 Sivaramakrishnan,* 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims
 were directed to polycarbonate containing cadmium laurate as an additive. The court
 upheld the Board’s finding that a reference specifically naming cadmium laurate as an
 additive amongst a list of many suitable salts in polycarbonate resin anticipated the
 claims. The applicant had argued that cadmium laurate was only disclosed as
 representative of the salts and was expected to have the same properties as the other
 salts listed while, as shown in the application, cadmium laurate had unexpected
 properties. The court held that it did not matter that the salt was not disclosed as
 being preferred, the reference still anticipated the claims and because the claim was
 anticipated, the unexpected properties were immaterial.).
 

**III.** **A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT
 DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE** "[W]hether a generic disclosure necessarily
 anticipates everything within the genus … depends on the factual aspects of the
 specific disclosure and the particular products at issue." *Sanofi-Synthelabo
 v. Apotex, Inc.,* 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir.
 2008). See also *Osram Sylvania Inc. v. American Induction Tech.
 Inc.,* 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) ("how
 one of ordinary skill in the art would understand the relative size of a genus or
 species in a particular technology is of critical importance").
 


A reference disclosure can anticipate a claim even if
 the reference does not describe "the limitations arranged or combined as in the
 claim, if a person of skill in the art, reading the reference, would ‘at once
 envisage’ the claimed arrangement or combination." *Kennametal, Inc. v.
 Ingersoll Cutting Tool Co.,* 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254
 (Fed. Cir. 2015) (quoting *In re Petering,* 301 F.2d 676, 681(CCPA
 1962)). In *Kennametal,* the challenged claim was to a cutting tool
 requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating.
 Claim 5 of the reference disclosed all the elements of the claimed coated cutting
 tool, however, ruthenium was one of five specified binding agents and the claim did
 not specify a particular coating technique. The specification of the reference
 disclosed PVD as one of three suitable coating techniques. The Federal Circuit stated
 that the reference’s "express ‘contemplat[ion]’ of PVD coatings provided sufficient
 evidence that a reasonable mind could find that a person of skill in the art… would
 immediately envisage applying a PVD coating. Thus, substantial evidence supports the
 Board's conclusion that [the reference] effectively teaches 15 combinations, of which
 one anticipates pending claim 1. Though it is true that there is no evidence in [the
 reference] of ‘actual performance’ of combining the ruthenium binder and PVD
 coatings, this is not required." *Kennametal,* 780 F.3d at 1383, 114
 USPQ2d at 1255 (citations omitted).
 


When a claimed compound is not specifically named in a reference,
 but instead it is necessary to select portions of teachings within the reference and
 combine them, e.g., select various substituents from a list of alternatives given for
 placement at specific sites on a generic chemical formula to arrive at a specific
 composition, anticipation can only be found if the classes of substituents are
 sufficiently limited or well delineated. *Ex parte A,* 17 USPQ2d
 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able
 to "at once envisage" the specific compound within the generic chemical formula, the
 compound is anticipated. One of ordinary skill in the art must be able to draw the
 structural formula or write the name of each of the compounds included in the generic
 formula before any of the compounds can be "at once envisaged." One may look to the
 preferred embodiments to determine which compounds can be anticipated. *In re
 Petering,* 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
 


In *In re Petering,* the prior art disclosed a
 generic chemical formula "wherein X, Y, Z, P, and R'-
 represent either hydrogen or alkyl radicals, R a side chain containing an OH group."
 The court held that this formula, without more, could not anticipate a claim to
 7-methyl-9-[d, l'-ribityl]-isoalloxazine because the
 generic formula encompassed a vast number and perhaps even an infinite number of
 compounds. However, the reference also disclosed preferred substituents for X, Y, Z,
 P, R, and R' as follows: where X, P, and
 R' are hydrogen, where Y and Z may be hydrogen or
 methyl, and where R is one of eight specific isoalloxazines. The court determined
 that this more limited generic class consisted of about 20 compounds. The limited
 number of compounds covered by the preferred formula in combination with the fact
 that the number of substituents was low at each site, the ring positions were
 limited, and there was a large unchanging structural nucleus, resulted in a finding
 that the reference sufficiently described "each of the various permutations here
 involved as fully as if he had drawn each structural formula or had written each
 name." The claimed compound was 1 of these 20 compounds. Therefore, the reference
 "described" the claimed compound and the reference anticipated the claims.
 


In *In re Schauman,* 572 F.2d 312, 197 USPQ 5 (CCPA
 1978), claims to a specific compound were anticipated because the prior art taught a
 generic formula embracing a limited number of compounds closely related to each other
 in structure and the properties possessed by the compound class of the prior art was
 that disclosed for the claimed compound. The broad generic formula seemed to describe
 an infinite number of compounds but claim 1 was limited to a structure with only one
 variable substituent R. This substituent was limited to low alkyl radicals. One of
 ordinary skill in the art would at once envisage the subject matter within claim 1 of
 the reference. 
 


Compare *In re Meyer,* 599 F.2d 1026, 202 USPQ 175
 (CCPA 1979) (A reference disclosing "alkaline chlorine or bromine solution" embraces
 a large number of species and cannot be said to anticipate claims to "alkali metal
 hypochlorite."); *Akzo N.V.**v.**International Trade Comm’n,* 808 F.2d 1471, 1 USPQ2d 1241 (Fed.
 Cir. 1986) (Claims to a process for making aramid fibers using a 98% solution of
 sulfuric acid were not anticipated by a reference which disclosed using sulfuric acid
 solution but which did not disclose using a 98% concentrated sulfuric acid
 solution.). See **[MPEP §
 2144.08](s2144.html#d0e211596)** for a discussion of obviousness in genus-species
 situations.
 


, 
# 2131.03 Anticipation of Ranges [R-10.2019]

**I.** **A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE
 ANTICIPATES THE RANGE**"[W]hen, as by a recitation of ranges or otherwise, a claim covers
 several compositions, the claim is ‘anticipated’ if *one* of them is
 in the prior art." *Titanium Metals Corp.**v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing
 *In re**Petering,* 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
 (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and
 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on
 Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a
 Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed
 range of compositions.).
 

**II.** **PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE
 ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT
 SPECIFICITY"**When the prior art discloses a range which touches or overlaps 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." What
 constitutes a "sufficient specificity" is fact dependent. If the claims are directed
 to a narrow range, and the reference teaches a broader range, other facts of the
 case, must be considered when determining whether the narrow range is disclosed with
 "sufficient specificity" to constitute an anticipation of the claims. Compare
 *ClearValue Inc. v. Pearl River Polymers Inc.,* 668 F.3d 1340,
 101 USPQ2d 1773 (Fed. Cir. 2012) with *Atofina v. Great Lakes Chem.
 Corp,* 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
 


In *ClearValue,* the claim at issue
 was directed to a process of clarifying water with alkalinity below 50 ppm, whereas
 the prior art taught that the same process works for systems with alkalinity of 150
 ppm or less. In holding the claim anticipated, the court observed that "there is no
 allegation of criticality or any evidence demonstrating any difference across the
 range." *Id.* at 1345, 101 USPQ2d at 1777. In
 *Atofina,* the court held that a reference temperature range of
 100-500 degrees C did not describe the claimed range of 330-450 degrees C with
 sufficient specificity to be anticipatory, even though there was a slight overlap
 between the reference’s preferred range (150-350 degrees C) and the claimed range.
 "[T]he disclosure of a range is no more a disclosure of the end points of the range
 than it is each of the intermediate points." *Id.* at 1000, 78
 USPQ2d at 1424. Patentee described claimed temperature range as "critical" to enable
 the process to operate effectively, and showed that one of ordinary skill would have
 expected the synthesis process to operate differently outside the claimed range. 
 


If the prior art disclosure does not disclose a
 claimed range with "sufficient specificity" to anticipate a claimed invention, any
 evidence of unexpected results within the narrow range may render the claims
 nonobvious. See **[MPEP §
 716.02](s716.html#d0e92844)***et seq.* The question of "sufficient specificity" is similar to
 that of "clearly envisaging" a species from a generic teaching. See
 **[MPEP
 § 2131.02](s2131.html#d0e203166)**. 
 


A **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
 **[103](mpep-9015-appx-l.html#d0e302450)** combination rejection is permitted if it is unclear if the
 reference teaches the range with "sufficient specificity." The examiner must, in this
 case, provide reasons for anticipation as well as a reasoned statement regarding
 obviousness. *Ex parte Lee,* 31 USPQ2d 1105 (Bd. Pat. App. &
 Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see
 **[MPEP
 § 2144.05](s2144.html#d0e211255)**.
 

**III.** **PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT
 OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE**"[A]nticipation under **[§ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** which takes differences into account." *Titanium
 Metals Corp. v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
 (Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were
 not anticipated by, although they were held obvious over, a graph in a Russian
 article on Ti-Mo-Ni alloys in which the graph contained an actual data point
 corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).
 


, 
# 2131.04 Secondary Considerations [R-08.2012]


Evidence of secondary considerations, such as unexpected results or
 commercial success, is irrelevant to **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejections and thus
 cannot overcome a rejection so based. *In re Wiggins,* 488 F.2d 538,
 543, 179 USPQ 421, 425 (CCPA 1973).
 


, 
# 2131.05 Nonanalogous or Disparaging Prior Art [R-08.2012]


"Arguments that the alleged anticipatory prior art is ‘nonanalogous
 art’ or ‘teaches away from the invention’ or is not recognized as solving the problem
 solved by the claimed invention, [are] not ‘germane’ to a rejection under
 **[section
 102](mpep-9015-appx-l.html#d0e302383)**." *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)). See also
 *State Contracting & Eng’ g Corp. v. Condotte America, Inc.,*
 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a
 reference is analogous art is not relevant to whether that reference anticipates. A
 reference may be directed to an entirely different problem than the one addressed by the
 inventor, or may be from an entirely different field of endeavor than that of the
 claimed invention, yet the reference is still anticipatory if it explicitly or
 inherently discloses every limitation recited in the claims.).
 


A reference is no less anticipatory if, after disclosing the invention,
 the reference then disparages it. The question whether a reference "teaches away" from
 the invention is inapplicable to an anticipation analysis. *Celeritas
 Technologies Ltd. v. Rockwell International Corp.,* 150 F.3d 1354, 1361, 47
 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims
 even though it taught away from the claimed invention. "The fact that a modem with a
 single carrier data signal is shown to be less than optimal does not vitiate the fact
 that it is disclosed."). See *Upsher-Smith Labs. v. Pamlab, LLC,* 412
 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that
 expressly excluded an ingredient held anticipated by reference composition that
 optionally included that same ingredient); see also *Atlas Powder Co. v. IRECO,
 Inc.,* 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed
 composition was anticipated by prior art reference that inherently met claim limitation
 of "sufficient aeration" even though reference taught away from air entrapment or
 purposeful aeration.).
 


]