Anticipation USC 102 Rejection



To overcome the anticipation rejection, the Applicant needs to only demonstrate that not all elements of a prima facie case of anticipation have been met, i.e., show that the prior art reference cited by the Examiner fails to disclose every element in each of the applicants’ claims.  “If the examination at the initial state does not produce a prima face case of unpatentability, then without more the applicant is entitled to grant of the patent.”  In re Oetiker, 977 F.2d 1443, 24 USPQ 2d 1443, 1444 (Fed. Cir. 1992).

The Office rejected claims X and X-XX under 35 U.S.C. 102(b) as being anticipated by NAME (US X,XXX,XXX).  A rejection based on anticipation requires that a single reference teach every element of the claim (MPEP § 2131).  "The identical invention must be shown in as complete detail as is contained in the ... claim."  Richardson v. Suzuki Motor Co., 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).  Or stated in another way, a "claim is anticipated only if each and every element as set forth in the claim is found, . . . described in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987)