Tools For Fighting a 102 Anticipation Rejection

MARK TERRY, ESQ.

A Section 102 rejection may appear complete because an Examiner identifies every claim term somewhere within one large prior-art reference. That does not necessarily establish anticipation.

In Ex Parte Putnam, the reference contained the individual elements of a software claim, but the elements were not arranged in the same way required by the claim. The Board emphasized that a reference must disclose both the elements and their claimed relationship.

An Examiner cannot rely on an artisan to select, rearrange, or combine distinct teachings from one document to reconstruct the invention. That reasoning may support an obviousness theory, but it falls short of strict anticipation.

Applicants should trace the connections between claim elements, including sequence, dependency, shared data, and functional relationships. Carefully drafted claims that make those relationships explicit can expose gaps in a reference-based rejection.

The key review question is not simply whether the words appear in the document, but whether the reference teaches the complete claimed system or process as arranged.