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

MARK TERRY, ESQ.

An anticipation rejection under Section 102 requires more than a general conceptual similarity between a claim and a prior-art reference. The reference must disclose every claim element and must disclose those elements arranged as required by the claim.

In Ex Parte Farkas, the Board reversed an anticipation rejection for three related reasons: the Examiner relied on broad concepts rather than the claimed limitations, did not provide a sufficient element-by-element analysis, and failed to show the elements arranged in the claimed manner.

A reference does not anticipate merely because an ordinarily skilled artisan could supplement or combine its separate teachings to reconstruct the invention. That type of reasoning may belong in an obviousness analysis, but it does not establish anticipation.

Applicants should compare each cited passage to the exact claim language, identify missing limitations, and test whether the Examiner has pulled unrelated disclosures from different portions of the reference without showing the claimed arrangement.

When the rejection lacks a complete mapping or relies on conceptual equivalence, the applicant may have a strong basis for requesting withdrawal or pursuing reversal on appeal.