IN RE MORSA (Fed. Cir. 2015) (P) – High level of ordinary skill asserted in the specification may lower the bar for enablement of the prior art

by | Oct 19, 2015 | [sub] enabling disclosure, Anticipation, Prior Art

Statements in the specification asserting a high level of skill in the art may be used to lower the bar for enablement of the prior art as well as the application itself. Here, for example, even high-level descriptions in a prior art press release about “us[ing] the...

SHIRE LLC v. AMNEAL PHARMACEUTICALS, LLC (Fed. Cir. 2015) (P) – The prior art must “teach a finite and limited class” that includes the compound claimed

by | Sep 24, 2015 | [sub] broad prior art disclosures, Anticipation

For a broad reference to be considered as disclosing a particular chemical compound for prior art purposes, it must “teach a finite and limited class” that includes the compound claimed. Here, for example, a compound representing the active ingredient in a claimed...

ALLERGAN, INC. v. SANDOZ INC. (Fed. Cir. 2015) (P) – A prior art range is not anticipatory when there is material and unpredictable variation across the range

by | Aug 4, 2015 | [sub] broad prior art disclosures, Anticipation

A range disclosed in the prior art does not anticipate a claimed invention falling within that range when it can be shown that there is material and unpredictable variation across the range. Here, for example, a prior art disclosure of a composition comprising...

CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP, LTD (Fed. Cir. 2015) (P) – An element comprising another element having a claimed characteristic is not an independent such element

by | Aug 4, 2015 | [sub] application to claims, Anticipation

An element comprising another element having a claimed characteristic is not a separate and independent element having that characteristic. Here, for example, an invocation function invoking a signal-dependent branch metric function in combination with the...

INEOS USA LLC v. BERRY PLASTICS CORPORATION (Fed. Cir. 2015) (P) – Establishing “criticality” of claimed range can avoid anticipation by broader, overlapping range

by | Apr 16, 2015 | [sub] broad prior art disclosures, Anticipation

It is important to establish the “criticality” of a claimed range to the claimed invention in order to avoid anticipation by a prior art reference disclosing a broader, overlapping range. Here, for example, a lubricant claimed in the amount of 0.05 to 0.5% by weight...

KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY (Fed. Cir. 2015) (P) – Prior art need not disclose actual performance of an otherwise anticipatory embodiment among various options

by | Mar 25, 2015 | [sub] broad prior art disclosures, Anticipation

There is no requirement that the prior art disclose actual performance of an otherwise anticipatory embodiment among various contemplated embodiments in order to establish a prima facie case of anticipation. Here, for example, the prior art’s disclosure of 15...