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35 USC 102 Patent Rejection: Understanding Anticipation
Statistics on 102 Rejections
Understanding the prevalence and impact of anticipation rejections can inform prosecution strategy:
- Frequency: Anticipation rejections under 35 USC 102 consistently rank among the most common types of rejections in USPTO Office Actions
- Technology Center Variations: TC 3700 (Mechanical Engineering) experiences slightly more 102 rejections than other technology centers
- Success Rate: Over 70% of applications that receive a 102 rejection ultimately proceed to allowance with proper prosecution strategy
- Examiner Differences: Examiners vary significantly in their propensity to issue 102 rejections versus 103 rejections
- Appeal Success: When appealed to the Patent Trial and Appeal Board, anticipation rejections are reversed more frequently than obviousness rejections
Comparing 102 vs. 103 Rejections
| Aspect | 102 (Anticipation) Rejection | 103 (Obviousness) Rejection |
|---|---|---|
| Number of References | Single reference only | One or more references |
| Standard of Proof | Each and every element must be present in a single reference | Elements can be found across multiple references with motivation to combine |
| Response Strategy | Identify at least one missing element | Show missing element, argue against motivation to combine, or show unexpected results |
| Typical Amendment Strategy | Add element not found in reference | Add element not found in combination or clarify how elements interact |
| Case Law Support | Verdegaal Bros., Net MoneyIN, Kennametal | Graham v. John Deere, KSR v. Teleflex |
Patent Filing Strategies to Avoid 102 Issues
Implementing proactive filing strategies can help avoid anticipation rejections:
- Conduct Thorough Prior Art Searches: Comprehensive searches before filing can identify potential 102 references, allowing you to draft claims that avoid anticipation issues
- Utilize Provisional Applications: File provisional applications early in the development process to secure an earlier priority date
- Consider Continuation-in-Part Applications: Use CIPs to add new matter that may help distinguish your invention from newly discovered prior art
- Draft Claims with Different Scopes: Include independent claims of varying scope to maximize chances of obtaining patent protection
- Focus on Unique Combinations: Emphasize novel combinations of elements, as these are less likely to be anticipated by a single reference
- Document Invention Development: Maintain detailed records of conception and reduction to practice in case you need to antedate certain references
- Consider Foreign Filing Strategy: File in jurisdictions with different novelty requirements to maximize global protection
Checklist for Responding to a 102 Rejection
- Carefully review the cited reference: Read the entire document, not just the sections cited by the examiner
- Verify the reference qualifies as prior art: Check publication/priority dates against your effective filing date
- Identify missing claim elements: Create a claim chart mapping each element to the reference
- Consider inherency arguments: Determine if the examiner is relying on inherent disclosure and whether it meets the legal standard
- Review potential exceptions: Determine if any 102(b) exceptions apply
- Prepare amendment strategy: Consider claim amendments that maintain valuable scope while distinguishing from the reference
- Draft response: Clearly articulate why the reference fails to anticipate each challenged claim
- Include supporting evidence: Consider including declarations if technical disputes arise
- Request interview if needed: Complex technical issues may be more efficiently resolved through examiner interviews
35 USC 102 Anticipation Rejection: Complete Guide for Patent Practitioners
Quick Navigation
- What is a 35 USC 102 Rejection?
- Key Elements of a 102 Rejection
- Types of 102 Rejections Under AIA
- Effective Response Strategies
- Real Case Example: Real Estate Alliance v. Move, Inc.
- Template for 102 Rejection Response
- Expert Tips for Overcoming 102 Rejections
- Federal Circuit Landmark Cases
- Patent Filing Strategies to Avoid 102 Issues
What is a 35 USC 102 Rejection?
A 35 USC 102 rejection, also known as an "anticipation rejection," occurs when the USPTO examiner determines that your invention is not novel because all elements of your claimed invention are disclosed in a single prior art reference.
Section 102 of the Patent Act states that a person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Key Elements of a 102 Rejection
For a valid 102 anticipation rejection, the examiner must demonstrate that:
- Single Reference: All elements of your claimed invention are found in a single prior art reference
- Identity of Invention: The prior art must disclose the identical invention "arranged as in the claim"
- Enablement: The prior art reference must enable a person of ordinary skill in the art to make and use the invention
- Inherency (if applicable): If the examiner relies on inherent properties, those properties must necessarily be present in the prior art
Types of 102 Rejections Under the America Invents Act (AIA)
Under the America Invents Act (AIA), 35 USC 102 rejections can be based on:
- 102(a)(1): Prior art that was patented, described in a publication, in public use, on sale, or otherwise available to the public before your filing date
- 102(a)(2): Prior art that was disclosed in a U.S. patent, U.S. patent application, or PCT application designating the U.S. that was effectively filed before your filing date
Responding to a 102 Rejection
Effective strategies for overcoming a 102 rejection include:
- Claim Amendments: Modify your claims to include elements not found in the cited reference
- Technical Arguments: Demonstrate that the cited reference does not disclose all elements of your claimed invention
- Missing Element Arguments: Show that at least one element of your claim is missing from the reference
- Different Arrangement: Argue that elements are arranged differently than in your claims
- Non-Enabling Disclosure: Argue that the reference does not enable a person of ordinary skill to make/use the invention
- Exception Arguments: If applicable, invoke exceptions under 102(b) such as:
- The disclosure was made by the inventor
- The subject matter was previously publicly disclosed by the inventor
- The disclosure was derived from the inventor
Real Case Example of a 102 Rejection
Case: Real Estate Alliance Ltd. v. Move, Inc. (Fed. Cir. 2017)
Claim at Issue: A method for locating available real estate properties using a map displayed on a computer, comprising: selecting a geographic area for searching for the available real estate; displaying a map of the geographic area on the computer; selecting a first area having boundaries within the geographic area; zooming to display the first area in more detail; selecting a second area having boundaries within the first area; displaying the second area in more detail.
Prior Art Rejection: The examiner rejected the claim under 35 USC 102(a)(1) as being anticipated by a prior art reference showing an interactive mapping system that allowed users to view property listings at various zoom levels.
Response Example: "The [Prior Art] reference fails to disclose the specific sequence of 'selecting a first area having boundaries within the geographic area' followed by 'zooming to display the first area in more detail' and then 'selecting a second area having boundaries within the first area' as recited in the claim. While [Prior Art] discloses a mapping system with zoom functionality, it does not teach the specific sequential selection process where each selection is contained within the previously selected area as claimed. Therefore, [Prior Art] does not disclose each and every element arranged as in the claim, as required for anticipation under Verdegaal Bros. v. Union Oil Co."
Example Response to a 102 Rejection
Response to Office Action dated [DATE]
Claim 1 stands rejected under 35 U.S.C. § 102(a)(1) as allegedly being anticipated by Johnson (US Patent 10,XXX,XXX). Applicant respectfully traverses this rejection.
The Examiner alleges that Johnson discloses "a medical device comprising: a catheter shaft; a balloon mounted on the catheter shaft; and a drug coating disposed on the balloon, wherein the drug coating includes a therapeutic agent and a biodegradable polymer matrix." However, Johnson fails to disclose at least the element of "a drug coating disposed on the balloon, wherein the drug coating includes a therapeutic agent and a biodegradable polymer matrix."
While Johnson discloses a balloon catheter with a drug coating at col. 4, lines 25-30, Johnson explicitly teaches away from using biodegradable polymers, stating at col. 5, lines 45-50: "non-biodegradable polymers are preferred for their stability during delivery." Johnson does not disclose any embodiment where the drug coating includes both a therapeutic agent and a biodegradable polymer matrix as specifically claimed.
The Federal Circuit has consistently held that anticipation under 35 U.S.C. § 102 requires that "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., 814 F.2d 628, 631 (Fed. Cir. 1987). Here, Johnson fails to disclose the specific element of "a drug coating... including a therapeutic agent and a biodegradable polymer matrix" as required by claim 1.
For at least these reasons, Johnson does not anticipate claim 1, and the rejection under 35 U.S.C. § 102 should be withdrawn.
Expert Tips for Overcoming 102 Rejections
- Thoroughly analyze the cited reference to identify any missing elements
- Consider the reference as a whole, not just the portions cited by the examiner
- Look for differences in how elements are arranged or connected
- Consider adding limitations from dependent claims or specification to distinguish your invention
- Review the reference's filing/publication dates carefully to ensure it qualifies as prior art
- Consider whether any exceptions under 102(b) might apply
- If appropriate, request an examiner interview to discuss your arguments
- Consider submitting an expert declaration if technical disagreements exist
Important Federal Circuit Case Law
Understanding landmark cases can strengthen your response:
- Kennametal, Inc. v. Ingersoll Cutting Tool Co. (780 F.3d 1376, Fed. Cir. 2015): Established that a reference can anticipate a claim when it doesn't "expressly spell out" the limitations as arranged in the claim, if a person skilled in the art would "at once envisage" the claimed arrangement.
- Net MoneyIN, Inc. v. VeriSign, Inc. (545 F.3d 1359, Fed. Cir. 2008): Established that anticipation requires a single reference to disclose all elements "arranged as in the claim."
- Verdegaal Bros. v. Union Oil Co. (814 F.2d 628, Fed. Cir. 1987): Clarified that anticipation requires that "each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference."
- Atlas Powder Co. v. IRECO, Inc. (190 F.3d 1342, Fed. Cir. 1999): Held that even if those skilled in the art did not recognize an inherent property in a prior art reference, that doesn't preclude a finding of anticipation if there is evidence establishing inherency.
- Sanho Corp. v. Kaijet Technology (Fed. Cir. 2024): Clarified that "publicly disclosed" under 35 USC § 102(b)(2)(B) requires making the invention available to the public, and a non-confidential but private sale is not sufficient.