REQUIREMENTS OF THE PRIOR ART TO DEFEAT NOVELTY - Patent law

We reviewed what types of information constituted prior art but we did not describe how that prior art is analyzed in view of a later claimed invention. Once a reference is qualified as prior art under one or more of the appropriate 102 sections,the next step is to analyze the properly qualified prior art to determine whether it affects the novelty of the claims we are examining. For the purpose of determining novelty (and also non-obviousness, as we’ll see later), each and every element and limitation in the claim language must be considered. The reason that each and every claim element and limitation must be considered is that in order for the prior art to render not novel (i.e. to anticipate) the claimed invention, the prior art must contain eachand every element and each and every limitation of the later claimed invention that is being scrutinized for novelty. In addition, each and every element and limitation must be found in a single reference. This is of great significance because it means that novelty cannot be defeated by picking one feature from one reference and another feature from a different reference and then combining them to anticipate the later claimed invention.

Beyond the one reference requirement for novelty determinations, in order for a prior art reference to anticipate a later claimed invention, the reference must present each and every element and limitation being claimed in a manner that does not require one to piece the components of the reference together. For that single reference to anticipate the later claimed invention, the claimed invention must allow one to be able to at once envisage the claimed invention from the disclosure. In other words,the elements or limitations of the claim language that are allegedly found in the priorart reference(s) cannot be presented in a way that they would require one to guess at which and how the pieces need to be put together to arrive at the claimed invention—the prior art reference cannot require combining or ordering elements that are not already combined or ordered in the required fashion.

Finally, in order for the prior art reference to anticipate a later claimed invention,the prior art reference must be enabled. This requirement stipulates that one of ordinary skill in the art must be able to make and use the anticipating teachings in the prior art reference without resorting to undue experimentation. Something describe din the prior art is not really described if one of ordinary skill cannot actually put the described thing together. The linchpin of the analysis turns on whether the allegedly novelty-defeating disclosure in the prior art reference could have been made without undue experimentation. A critical difference between the prior art enablement requirement and the prior art anticipation analysis is that the prior art reference can be enabled by teachings and knowledge outside the four squares of its disclosure.For example, if one reference teaches the structure of a compound that you wish to later claim and another reference or combination of references teaches how to make that compound, then the reference is enabled. Prior art for U.S. patents are presumed enabled, including not only the material in the claims but the entire patent specification as well. Outside of the category of prior art consisting of U.S. patents,the question of whether prior art is enabled or not is very fact specific and, at the same time, subjective, meaning that easy and fast conclusions should be avoided,especially where large investments of time and/or money are being contemplated.


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