Interference No. 105,019
Correa v. Roberts
B. Correa's PrelimmM Motion 2
By this preliminary motion, Correa asserts that claims 14-16, 18-20 and 22 of Roberts are
unpatentable under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 4,695,278
("Lawson '278") (Exhibit 2002).
Few matters in patent law are as well established as the principle that anticipation under 35
U.S.C. § 102 requires the disclosure in a single piece of prior art each and every limitation of a
claimed invention. E.g., AMle Computer, hic. V. Articulate Systems, Inc., 234 F.3d 14, 20, 57
USPQ2d 1057, 1061 (Fed. Cir. 2000); Glaxo, Inc. v. Novol2hann, Ltd., 52 F.3d 1043, 1047, 34
USP02d 1565, 1567 (Fed. Cir. 1995). That certainty, however, does not make anticipation a
simple matter, because in certain situations not everything recited in a claim is necessarily a
feature which must be met by the applied prior art reference. For instance, citing seven cases
spanning over forty years, the Court of Appeals for the Federal Circuit stated, in In re Schreiber,
128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997): "It is well settled that the
recitation of a new intended use for an old product does not make a claim to that old product
patentable." More specifically, the Court stated, id.:
Although Schreiber is correct that Harz does not address the use of
the disclosed structure to dispense popcorn, the absence of a disclosure
relating to function does not defeat the Board's finding of anticipation. It is
well settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable. (Citations omitted.) (Emphasis
added.)
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