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.APA and Statements outside the Background
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.)
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.