Now You See It, Now you Don’t: A Rorschach Test For Anticipation?

It is black letter patent law that a prior art species anticipates a genus under 35 U.S.C. § 102.[1] But when does a genus anticipate a species or even another genus? The Federal Circuit and its predecessor court, the Court of Customs and Patent Appeals (CCPA), have addressed this question in a series of cases dating back to 1962, when the CCPA decided In re Petering.[2] In April 2015, the Federal Circuit decided the most recent case in the series, Ineos USA LLC v. Berry Plastics Corp.[3] The claims at issue in these cases are of two main types: claims to a chemical subgenus or species of a prior art genus and claims reciting a range that overlaps with or is encompassed by a prior art range. In this article, we will explore how the anticipation analysis applied by the Federal Circuit has come to resemble an obviousness analysis and how patent drafters and prosecutors can prepare for anticipation rejections based on prior art genera.

Authors: Adam C. Krol, Muna Abu-Shaar