Appeal 2006-2328
Application 10/131,049
Jones & Co., Inc., 324 F.3d 1346, 1354 , 66 USPQ2d 1331, 1337 (Fed. Cir.
2003). Valid prior art may be created by the admissions of the parties even
absent a statutory basis in § 102. Id. A statement by an applicant during
prosecution identifying certain matter not the work of the same inventor as
“prior art” is an admission that the matter is prior art. Id. The USPTO has
long held that derivation of an invention from the work of another can be
applied as § 102(f) prior art in a rejection based on §§ 102(f)/103. See
Ex parte Andresen, 212 USPQ 100, 102-103 (Bd. Pat. App. 1981) (prior to
1984 amendment to § 103); Ex parte Yoshino, 227 USPQ 52, 54 (Bd. Pat.
App. & Int. 1985) ("The amendment to section 103 in the 1984 Act implicitly
provides that prior art can exist by virtue of subsection 102(f); i.e. subject
matter which an applicant did not invent may have the status of prior art as to
him. Manifestly, that which is prior art under subsection 102(f) can be used
alone or in combination with other prior art to support a rejection under
§ 103."). It is now clear that § 102(f) is a prior art provision for purposes of
§ 103 and § 102(f) does not refer to public activity. See OddzOn Products,
Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed.
Cir. 1997) ("We therefore hold that subject matter derived from another not
only is itself unpatentable to the party who derived it under § 102(f), but,
when combined with other prior art, may make a resulting obvious invention
unpatentable to that party under a combination of §§ 102(f) and 103.
See generally 2 Chisum, Patents § 5.03[3][d] "Derivation from Another--
Section 102(f)." Of course, § 103(c) permits applicants to disqualify subject
- 39 -
Page: Previous 32 33 34 35 36 37 38 39 40 41 42 43 44 45 46 Next
Last modified: September 9, 2013