Appeal No. 1995-4400
Application 07/694,302
Secondly, in order for '91 MTA to be anticipatory, it must disclose, expressly or
under principles of inherency, each and every element of a claimed invention. Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983). Here
examiner has rejected not only the claims to monoclonal antibody 720 but also the claims
directed to hybridomas. '91 MTA does not mention hybridomas and the examiner does not
explain why the single mention of monoclonal antibody 720 in the Agreement expressly or
inherently anticipates the claimed hybridomas.
Lastly, examiner does not identify who, Roberston or Specter, satisfies the condition
of "others" in determining patentability under 35 U.S.C. § 102(a). We presume it is
Robertson since examiner emphasizes that '91 MTA is signed by Robertson alone
(examiner's answer, pp. 4-5). In this regard, it is true that '91 MTA is signed only by
Roberston and that it does not include the signatures of the other three co-inventors listed
on the application file, but we do not see that that alone establishes that "another"3 person,
3 "It may not be readily apparent from the statutory language that a printed publication cannot stand
as a reference under § 102(a) unless it is describing the work of another. A literal reading might appear to
make a prior patent or printed publication "prior art" even though the disclosure is that of the applicant's own
work. However, such an interpretation of this section of the statute would negate the one year period
afforded under § 102(b) during which an inventor is allowed to perfect, develop and apply for a patent on his
invention and publish descriptions of it if he wishes. Illinois Tool v. Solo Cup Co., 461 F.2d 265, 172
USPQ 385 (CA 7), cert. denied, 407 U.S. 916 (1972).
Thus, one's own work is not prior art under § 102(a) even though it has been disclosed to the public
in a manner or form which otherwise would fall under § 102(a). Disclosure to the public of one's own work
constitutes a bar to the grant of a patent claiming the subject matter so disclosed (or subject matter obvious
therefrom) only when the disclosure occurred more than one year prior to the date of the application, that is,
when the disclosure creates a one-year time bar, frequently termed a "statutory bar," to the application
under §102(b). As stated by this court in In re Facius, 56 CCPA 1348, 1358, 408 F.2d 1396, 1406, 161
USPQ 294, 302 (1969), "But certainly one's own invention, whatever the form of disclosure to the public,
may not be prior art against oneself, absent a statutory bar ." [Emphasis in original.]
Since the publication in this case occurred less than one year before appellant's application, the
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