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[jdd0961]

Does anyone know if a book containing multiple articles be used as a 102 rejection.  The compilation of articles in a book was presented at a seminar.  Can I use the different articles to make a single 102 rejection?

[khazzah]

Does anyone know if a book containing multiple articles be used as a 102 rejection.  The compilation of articles in a book was presented at a seminar.  Can I use the different articles to make a single 102 rejection?

The MPEP indicates that a multiple-reference 102 is appropriate in a few limited scenarios. See
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2131_01.htm. Your scenario doesn't seem to fit one of these.

[lazyexaminer]

Agreed. There is likely no sufficient relation between these distinct articles so that they can be relied upon together.

Even different parts of a single reference may not be good enough for a 102. A shout out to Karen's excellent blog:

http://allthingspros.blogspot.com/2011/05/bpai-anticipation-multiple-embodiments.html

[patentatt]

Agreed. There is likely no sufficient relation between these distinct articles so that they can be relied upon together.

Even different parts of a single reference may not be good enough for a 102. A shout out to Karen's excellent blog:

http://allthingspros.blogspot.com/2011/05/bpai-anticipation-multiple-embodiments.html

The question - as I see it - isn't whether an examiner can use multiple references in a 102, or whether multiple embodiments may be combined in a 102.  Rather the question is: does a single book, consisting of multiple chapters/articles, qualify as a single reference for 102 purposes?

The answer to that question, I am pretty sure, is yes, since a book is a single printed publication, even if it include multiple chapters or articles.  If I recall correctly, there was a case holding that a gigantic reference, composed of many, many different sub-sections or sub-articles was a single printed publication.  I can't seem to find the case, though.

Now, as someone above noted, a 102 rejection requires not just a single publication, but that all of the claim elements are found within the publication arranged as in the claim.  In other words, the examiner cannot pick and choose different elements from different sub-articles, unless the book fairly teaches that they are related as claimed (which seems unlikely).  But that is a separate issue, and doesn't prevent the book from qualifying as a single prior art reference.

[lazyexaminer]

Agreed. There is likely no sufficient relation between these distinct articles so that they can be relied upon together.

Even different parts of a single reference may not be good enough for a 102. A shout out to Karen's excellent blog:

http://allthingspros.blogspot.com/2011/05/bpai-anticipation-multiple-embodiments.html

The question - as I see it - isn't whether an examiner can use multiple references in a 102, or whether multiple embodiments may be combined in a 102.  Rather the question is: does a single book, consisting of multiple chapters/articles, qualify as a single reference for 102 purposes?

The answer to that question, I am pretty sure, is yes, since a book is a single printed publication, even if it include multiple chapters or articles.  If I recall correctly, there was a case holding that a gigantic reference, composed of many, many different sub-sections or sub-articles was a single printed publication.  I can't seem to find the case, though.

Now, as someone above noted, a 102 rejection requires not just a single publication, but that all of the claim elements are found within the publication arranged as in the claim.  In other words, the examiner cannot pick and choose different elements from different sub-articles, unless the book fairly teaches that they are related as claimed (which seems unlikely).  But that is a separate issue, and doesn't prevent the book from qualifying as a single prior art reference.

I suppose that's sorta fair, and it really comes down to facts that we don't have from the original post.

When I read the question, I got in my head that he was talking about something like a journal (as an EE guy, say, Electronics Letters or something from IEEE or whatever) with a bunch of articles. In such a case, even if all the articles are bound together in one book, it is pretty clear that each article is unrelated to the next and is a distinct reference for prior art purposes. But that's an extreme example.

If instead it is more like a book with different chapters, then you're right that is much more possible to be a single reference, but you'd still have the problem of whether all the chapters/articles are really talking about the same thing, so the teachings can be related and applied together so that it could be considered a single embodiment where all the claimed stuff is arranged as claimed. Possible, though tougher when you're picking different things from different places in a reference, it's impossible to say without specifics.

So I guess the best answer, like many hypos, is we can't really say on these facts. If you're just picking and choosing from different and not really related parts of a big reference, probably no to 102 (b/c you run into the combining different embodiments problem). If all the teachings that you're using are all related to the same thing, even if in different "articles" whatever that may be, maybe yes.

[Isaac]

When I read the question, I got in my head that he was talking about something like a journal (as an EE guy, say, Electronics Letters or something from IEEE or whatever) with a bunch of articles. In such a case, even if all the articles are bound together in one book, it is pretty clear that each article is unrelated to the next and is a distinct reference for prior art purposes. But that's an extreme example.

The way to analyze the question for 102 purposes is to ask whether the single reference discloses the combination, rather than merely individual parts of the claimed invention.   Even if the individual parts of the invention are all listed on a single page of the reference, without a disclosure (explicit or inherent) to combine the parts to make the claimed invention, the reference does not anticipate.

A periodic table does not disclose every inventive molecule just because the chart lists all 100+ available elements and the electronic structure for each element.

[patentatt]

Let me try again.

There are two separate questions in this thread, and the OP doesn't clearly distinguish between them:

1. Does the entire book constitute a single "printed publication" such that the entire book is available for use as a single reference in a 102 rejection (as opposed to constituting plural printed publications that may only be used together in a obviousness analysis)?
2. If the entire book constitutes a single "printed publication", does the book disclose each of the recited elements, as arranged in the claim, to thereby satisfy the standard for anticipation?

Both of these questions must be answered.  If the answer to question 1 is "no", then it doesn't matter what the answer to question 2 is - the book is simply not a single reference as required for anticipation, regardless of what the entire book discloses.  If the answer to 1 is no, then the examiner must abandon the anticipation analysis and move on to consider obviousness.

I'm pretty sure that the answer to 1 is yes.

[NJ Patent1]

patentatt:  IMO you nailed w/ "arranged as required by the claim".  I've relied (and won) on this.  Examiners miss that point a lot.  The whole publication (IMO book or journal issue irrelevant) is available, but where is the disclosure of the arrangement as required by the claim?   

[patentatt]

patentatt:  IMO you nailed w/ "arranged as required by the claim".  I've relied (and won) on this.  Examiners miss that point a lot.  The whole publication (IMO book or journal issue irrelevant) is available, but where is the disclosure of the arrangement as required by the claim?   

See:

But disclosure of each element is not quite enough — this court has long held that "[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim." Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. 1335*1335 Cir.1983) (citing Soundscriber Corp. v. United States, 175 Ct.Cl. 644, 360 F.2d 954, 960 (1966) (emphasis added)).

Finisar Corp. v. DirecTV Group, Inc., 523 F. 3d 1323, 1334-1335 (Fed. Cir. 2008)