For an examiner to reject a claim based on anticipation, each and every limitation must be found either expressly or inherently in a single prior art reference. An anticipation rejection is a rejection where the examiner is of the opinion that the claimed invention is not novel. However, the United States Patent and Trademark Office (USPTO) has taken a liberal approach to determining whether a particular limitation is found (i.e., disclosed) in the prior art reference. The USPTO would reject a claim based on anticipation even if the prior art reference did not disclose a particular limitation so long as that particular limitation was “immediately apparent” to one of ordinary skill in the art. In other words, as long as a skilled artisan reading the reference would “at once envisage” the claimed arrangement after reading the prior art reference. The Federal Circuit firmly rejected this standard applied by the USPTO in Nidec v. Zhongshan (Fed. Cir. March 4, 2017).
Nidec illustrates a case where the USPTO applied a loose standard as to when a prior art reference disclosed a claim limitation. The USPTO applied the loose standard based on a prior case rendered by the Federal Circuit, namely, Kennametal. The USPTO thought that the Kennametal case supported their findings and application of the holding in Kennametal.
The Federal Circuit rejected the USPTO’s application of the law and clarified the holding of Kennametal and how Kennametal does not support the loose standard that the USPTO has been applying.
In Nidec, the patent at issue disclosed a system for controlling torque of an electromagnetic motor. In order to do so, three separate motor control values were outputted and applied to three-phase windings of the motor. The three motor control values could be expressed in relation to a stationary frame of reference or a rotating frame of reference. The parties agreed that the claimed invention required that the three motor control values must be expressed in relation to the rotating frame of reference.
The patent at issue was being examined by the Patent Trial and Appeal Board at the USPTO after institution of an Inter Partes Review (IPR) proceeding. The petitioner was trying to invalidate the patent and submitted a prior art reference, namely, Kusaka which disclosed the claimed invention except that the three motor control values were stated in reference to the stationary frame of reference, not the rotating frame of reference.
The Board or PTAB held that anticipation can be found even with the prior art reference fails to disclose a claimed element so long as a skilled artisan reading the reference would “at once envisage” the claimed arrangement. The Board cited to Kennametal for support for their position.
The Federal Circuit disagreed.
The Federal Circuit explained that Kennametal addresses whether a disclosure of a limited number of combination possibilities discloses one of the possible combinations. In particular, in Kennametal, the challenged claim required a particular binding agent and a PVD coating to be used together. The prior art reference disclosed five binding agents, one of which was the claimed binding agent and three coating techniques, one of which was PVD. The reference never disclosed the specific combination of particular binding agent and particular coding technique but it taught that any of the five binding agents could be used with any of the three coating techniques. The issue was whether disclosure of 15 combinations of binding agents and coating techniques would be sufficient to find that the prior art reference “disclosed” the claimed combination of binding agent and coating technique. The Federal Circuit held that a limited number of combination possibilities could be said to disclose the claimed combination. Kennametal does not permit the USPTO to fill in missing limitations simply because a skilled artisan would immediately envision them.
During prosecution, if the examiner has failed to provide a pin point citation as to where a particular claim limitation is found in the prior art, this case would be a good case to support the proposition that the examiner cannot fill in the missing limitations because of what he/she might think a skilled artisan might immediately envisage upon reading a prior art reference. The prior art must disclose the specific claimed combination in order for the examiner to reject the claim based on anticipation.
However, it would be prudent to cite to this case during prosecution only for the more important aspects of the invention and not for each and every instance where the examiner fails to provide a pin point citation to a particular reference.
On the one hand, this case is not significant because examiners may reject the claimed invention based on obviousness instead of anticipation. However, in my opinion, moving the rejection from anticipation to obviousness may be preferred because it may be easier to overcome an obviousness rejection based on the various arguments that can be presented. See MPEP 2100. To overcome an anticipation rejection based on what a fictional skilled artisan might immediately envisage is tough. The arguments would be directed as to what the skilled artisan might or might not envisage. It would be a dispute between the examiner’s opinion and the inventor’s opinion.
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