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   Anticipation vs Same Invention
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   Author  Topic: Anticipation vs Same Invention  (Read 2676 times)
StressedOut
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Re: Anticipation vs Same Invention
« Reply #5 on: Aug 1st, 2005, 5:30pm »
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<<<I tend to believe it can not. If so, there is statutory double patenting in this example.>>>
 
Exactly. But according to the answer in the question, it in fact is a two way street.
 
The issue I have is that under double patenting the idea is not to allow an unwarranted extension
of the patent. It seems to me where an application covers any embodiment that is found in the  
patent, you are extending the patent. In other words, based on the underlying the theory the
question and answer from the old test should be flat wrong.  
 
<<<No, the application claim would NOT be anticipated by the patent (although there might be an obviousness issue). I'm sorry if my previous explanation was confusing. In order to anticipate, the reference must have EACH and EVERY ELEMENT of the claim. In your example, D is missing from the reference patent. If the patent said "comprising, A, B, C, and D" then you would have anticipation.>>>
 
Ok, I thought the word 'comprising' was broad enough to capture D. The MPEP says comprising considers the three elements and anything else, while consisting captures only the exact embodiment. In other words, I thought comprising was enough to encompass the added limitation of D.
 
What I am confused about is why we even have a difference between 'comprising' and 'consisting' if anticipation doesn't see a difference. Unless... comprising is enough to state a case for obviousness all by itself while 'consisting of' would require a second reference. That would make sense.
 
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Eliz
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Posts: 107
Re: Anticipation vs Same Invention
« Reply #6 on: Aug 1st, 2005, 8:27pm »
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on Aug 1st, 2005, 5:30pm, StressedOut wrote:
<<<No, the application claim would NOT be anticipated by the patent (although there might be an obviousness issue). I'm sorry if my previous explanation was confusing. In order to anticipate, the reference must have EACH and EVERY ELEMENT of the claim. In your example, D is missing from the reference patent. If the patent said "comprising, A, B, C, and D" then you would have anticipation.>>>
 
Ok, I thought the word 'comprising' was broad enough to capture D. The MPEP says comprising considers the three elements and anything else, while consisting captures only the exact embodiment. In other words, I thought comprising was enough to encompass the added limitation of D.

I think I see your confusion (or perhaps I am confused--someone please correct me if so).  In your example, you had:
Reference patent:  Comprising ABCD
Application: Consisting of ABC
 
Suppose the invention of the reference patent is a widget that requires ABCD to operate.  D is considered an essential element to the operation of the widget.  Further suppose that the inventor of invention of the app discovers that the widget can in fact operate without element D.  While ABCD is in the prior art, the inventor of the app has still invented something novel (let's assume that removal of element D was nonobvious).  However, the inventor of the app should phrase his claim as it is phrased in your example--i.e. "consisting of ABC"--in order to avoid the prior art that claims ABCD.  If the applicant claimed the widget "comprising ABC" this would cover ABCD, and therefore the reference patent would anticipate.  
 
Like I said before, in order to anticipate, the reference has to have each and every element of the claim.  Comprising ABCD does not mean ABC, or ABD, or BCD, etc.--rather it means "ABCD and possibly some other stuff", e.g. ABCDE, ABCDF, etc.  
 
I hope that makes sense.  If not, I hope someone else can explain it better than me.
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