Tuesday, November 3, 2009

Admitted Prior Art

I've learned to draft patent applications with Background sections that are really short and really general, with the basic rationale being "the Examiner can use statements in the Background as Admitted Prior Art."

Recently I looked into the topic of Admitted Prior Art (APA). Here's what I found. First, I'll discuss the treatment of Backgound statements as APA, and then I'll discuss the treatment of statements outside the Background as APA.

APA and the Background section 
Surprisingly, the MPEP contains no discussion of APA at all. Also, I found no per se rule in the case law that statements in the Background are prior art. However, the case law does say: when the Specification as a whole implies that a particular statement is prior art, then the Examiner has a prima facie case for the statement being APA. 
Ex parte Shirley (Appeal 2009-2352) has an in-depth discussion of Background-as-APA. In that case, the specification used the word "related art" rather than "prior art," and also contained a disclaimer that background statements are not intended to be admission of prior art. The BPAI said that it wasn't the form of the statements that mattered, but the "substantive content of the Specification as a whole" (Decision, p. 22). The BPAI then provided an in-depth explanation of the rule for determining whether statements in the specification are APA:
      When a review of the record as a whole reasonably implies that—or at least raises a reasonable question of whether—a particular disclosure or statement constitutes a prior-art admission, an Examiner may use such a disclosure or statement in formulating prior-art rejections of claims under 35 U.S.C. §§ 102 or 103. This is so even if the specific words “prior art” are not expressly used verbatim. In such circumstances though, the Examiner must set forth the underlying facts and reasoning leading to the conclusion that a disclosure or statement constitutes a prior-art admission.
      Such prior-art rejections, when supported by sufficient facts and reasoning, establish prima facie evidence of the claims’ unpatentability and shift the burden of rebuttal to the Applicant. An Applicant cannot then rebut the rejection by merely arguing that the term “prior-art” was never used verbatim. Similarly, an Applicant’s noting of the fact that the Specification includes a prior-art disclaimer, may not alone be sufficient to rebut such a rejection in those situations where an Examiner has previously provided a rationale for why the disclaimer is ineffective or unpersuasive. Of course, an Applicant may still rebut such a prior-art rejection with credible and sufficient evidence that the disclosure or statement upon which the Examiner relies does not constitute a prior-art admission. For example, an Applicant can still affirmatively state that the disclosure in question was Applicants’ own work, not publicly disclosed more than a year prior to the application’s filing.
   ...  [W]e are merely noting that the use of alternative characterizations like “related art” and prophylactic prior-art disclaimers, such as the one included in the present Specification, are commonplace in patent prosecution. We are further clarifying that these alternative characterizations and prior-art disclaimers must be reviewed on a case-by-case basis, and in light of the record as a whole, to determine which disclosures and statements, if any, actually constitute prior-art admissions.
(Ex parte Shirley, pp. 22-23 and 25.)
APA and Statements outside the Background

The rule as explained in Ex parte Shirley says the Specification must be looked at as a whole. Therefore, it's not surprising to find that statements from the Specification that are not in the Background can be used as Admitted Prior Art, depending on the circumstances. For example,
  • A product described by vendor and model number was found to be APA. (Ex parte Barr, Appeal 2006-0963.)
  • A component described as "commonly known in the industry" was found to be APA. (Ex parte Reinert, Appeal 2007-2399.)
  • A method described as "traditional" is APA, but the resulting product may not be. In Ex parte Vineis, (Appeal 2008-5873), the specification stated:
Substrate 10 may be provided with a rough edge 20, having a roughness greater than that of an edge polished substrate...The roughness of rough edge 20 is inherently present in substrate 10 when, for example, substrate 10 is cut from a boule traditionally formed by the Czochralski method, and is subjected to the conventional mechanical edge shaping process described above.
The Board said:
Although Appellants rely on techniques that are “traditionally” used or “conventional” in the course of forming their substrate, Appellants do not identify the semiconductor substrate recited in the claims as the work of another. (See FF 12). Thus, the recited semiconductor substrate is not admitted prior art.
This information about APA wasn't easy to find. However, now that I've found it, this case law provides a framework for arguing against APA, if the facts support it.


  1. Did you even read MPEP 2129? Admissions by the applicant re. prior art are binding:

    A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. §102. Tokyo Keiso Company, v. SMC Corporation, 2009 WL 59769 (Fed. Cir. 2009), Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988), In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975) (holding applicant's labeling of two figures in the application drawings as "prior art" to be an admission that what was pictured was prior art relative to applicant's improvement), MPEP §2129. However, even if labeled as "prior art," the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories. Id.; see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984) ("[W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work.").

  2. Thanks for pointing to MPEP 2129. I see that my characterization of the MPEP as saying "nothing at all about AAPA" is clearly inaccurate.

    What I really meant was that the MPEP doesn't clearly explain what is and isn't AAPA. MPEP 2129 tells you one thing that *is* AAPA (drawings labeled Prior Art). But doesn't mention lots of other things that may be AAPA. And doesn't explain that the entire Background is *not automatically* AAPA, as some Examiners seem to think.

  3. If an examiner asks the applicant point blank if something (other features, need or a problem to be solved) discussed in the background, or anywhere else in the disclosure for that matter, if it is known in the art, don't the applicant's have a duty to disclose this information to the examiner according to rule 156? see also MPEP section 2000.

    1. I don't think there are a lot of things about compliance with Rule 56 that are crystal clear. Everyone draws the line in a different place.

      If the Examiner did this via 1.105 Request for Information, I think the answer is an unequivocal Yes, the Applicant must answer to comply with Rule 56. Short of that, I suppose it depends on exactly how/what the Examiner asks.