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

MARK TERRY, ESQ.

In Ex Parte Farkas, the Patent Trial and Appeal Board reversed an anticipation rejection and highlighted three recurring problems applicants should examine when responding under 35 U.S.C. §102.

First, a prior-art reference must disclose the claimed limitation itself, not merely a similar concept or general principle. A reference that suggests the same broad idea does not necessarily anticipate the precise language and structure of the claim.

Second, anticipation requires an element-by-element analysis. The examiner must identify every claimed limitation in a single reference rather than collect distinct teachings that would need to be combined or supplemented.

Third, the reference must disclose the elements arranged as they are in the claim. Finding isolated words or features in different places is not enough when the claimed relationship or organization is missing.

Applicants should therefore review whether the rejection identifies each exact limitation, supports every factual finding, and shows the required arrangement within the four corners of one reference.