More Ammunition Against an Examiner’s Improper Anticipation Rejection

By: Seema Mehta

The U.S. Federal Circuit recently issued an opinion (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor) on a straight-forward anticipation issue, with some good quotes for use in prosecution practice.  In this case, appealed from a Patent Trials and Appeals Board (PTAB) decision in an Inter Partes review (IPR) proceeding, the Federal Circuit reversed the Board’s finding of anticipation of claim 21 of Nidec’s U.S. Pat. No. 7,208,895.

In its finding that prior art reference US Pat. No. 5,569,995 to Kusaka anticipated claim 21 of the ‘895 patent, the PTAB held that anticipation can be found even when a prior art reference fails to disclose a claim element so long as a skilled artisan reading the reference would “at once envisage” the claimed arrangement. J.A.21 (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)).  The Federal Circuit reversed the Board’s decision, stating that the Board misapplied Kennametal by improperly assuming disclosure of a claim element.  The court clarified that Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would “at once envisage” the missing limitation. Rather, Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations.  Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.

In practice, this often comes up when an Examiner insists that one of ordinary skill would readily appreciate that the prior art in fact discloses a missing element in an anticipation rejection.  The Nidec case is good ammunition for responding to such contentions, because the case confirms that it is not possible to support an anticipation rejection where any element is missing from the single prior art reference cited.  Rather, all elements must be present in the reference, either explicitly or inherently.  However, as Kennametal relates to the explicit disclosure of an element, that element may be disclosed as part of a limited number of combination possibilities rather than an outright description of the particular claimed combination.