PTAB Reverses a 35 U.S.C. §102 Rejection Today: This Is Why They Did It

MARK TERRY, ESQ.

Ex Parte Farkas provides a compact illustration of the legal requirements for a valid Section 102 anticipation rejection. The Board focused on whether the cited reference actually disclosed the claimed invention, rather than merely related concepts.

First, concepts and principles do not anticipate precise claim limitations. An Examiner must identify the actual claimed feature in the reference, not a generalized idea that might be considered similar.

Second, anticipation requires an element-by-element analysis. Each limitation must be found within a single reference without relying on an artisan to supplement missing portions.

Third, the disclosed elements must be arranged as they are in the claim. Collecting separate statements from different parts of a lengthy reference is insufficient when the reference does not describe the claimed relationship or sequence.

Applicants facing an anticipation rejection should audit the claim chart carefully and separate genuine disclosure from assumptions, reconstruction, or obviousness-style reasoning.