Appeal 2006-2328
Application 10/131,049
matter which qualifies as prior art only under one of more of §§ 102(e), (f),
and (g) if the subject matter and the claimed invention were, at the time the
invention was made, owned by the same person or subject to an obligation of
assignment, but presumably applicants would disclose that the subject matter
is not prior art by virtue of this exception. Lastly, § 103 considers the
knowledge of those of ordinary skill in the art even if it is not technically
prior art under a provision of § 102. Since applicants are under a duty to
disclose information material to patentability, 37 C.F.R. § 1.56, it is presumed
that applicants will disclose if they are aware of information that is within the
knowledge of those of ordinary skill in the art.
The issue is whether applicants can be required to admit or deny that
the subject matter is "prior art." It is a common problem in the USPTO that
applicants describe or label subject matter as "background art," or "related
art," or as "conventional," but do not "admit" that it is "prior art." That is the
situation in this case. The Examiner presumed that the figures labeled
"Background Art" were not "Prior Art" because Appellant did not use that
exact terminology. Although terms like "background art" (or "related art" or
"conventional" or some other term) suggest an admission that the subject
matter is "prior art" to the applicant, the admission is not clear. If subject
matter designated "background art" (or some other term) is "prior art" or is
evidence of knowledge of the level of skill in the art, it is manifestly highly
relevant to the issue of patentability. In our opinion, it is in the public interest
for the USPTO to require applicants to admit or deny that the subject matter is
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