Anticipation Short Cuts

Do not let examiners take short-cuts with anticipation. Even if a single reference shows all claimed elements, if it does so only by pointing to different embodiments, a case of anticipation has not been established.

Specifically, it is well settled that combining separate embodiments of a single reference is improper without some teaching to do so. When a prior art reference discloses multiple, distinct embodiments, combining teachings from those distinct embodiments requires an obviousness analysis, including a demonstration of why one of ordinary skill would be motivated to combine those disparate teachings. For anticipation, it is not enough that the prior art reference discloses multiple, distinct teachings that the ordinary artisan might somehow combine to achieve the claimed invention. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).

Examiners often think that because only one reference used, it must be an anticipation rejection. Often the fact that the examiner is using multiple distinct embodiments is without dispute since the examiner explicitly cites to different embodiments in a reference. In such a case, point out how the Office improperly combines disclosure that is from separate embodiments (or worse, from the background cite art in combination with the disclosed invention) and traverse the rejection.

The Office has the burden to establish a prima facia case, so push back against short-cuts.