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Author Topic: Compilation of articles in a book = "single prior art reference"  (Read 655 times)

jdd0961

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Hi, does anyone have any case law of where a book (or some published work), that had multiple authors, was considered a single prior art reference? 
(I am trying to invalidate a patent by the use of a book that was published and given out during a conference.  The book contained articles by different authors.  I just need some case law that would help with this argument that the book is a single reference)
I found the Kyocera v. ITC case -- which stated that a compilation of standards was not a single prior art reference.  I need a case that was contrary to this ruling.  I have been looking for days and haven't been able to find much. 

Thanks so much in advance for any help.

Jyoti
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JustAnotherExaminer

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If the compilation was available as a compilation on a prior art date, then it is a single prior art reference because its a publication as a compilation.

If it was separate articles that are prior art, and then compiled later down the road after the invention by applicant, then it'd be separate pieces of prior art.

But remember, a single reference doesn't automatically equate to anticipation.  In fact, while a compilation is a single publication, it inherently discloses multiple embodiments (each part of the compilation) and therefore whether a single embodiment anticipates or multiple embodiments render obvious is an entirely different question.

So for those conference proceedings compilations, if you're using two articles, you'll need to make a single-reference obviousness argument.

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Isaac

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So for those conference proceedings compilations, if you're using two articles, you'll need to make a single-reference obviousness argument.

I don't think you've thought this through.  It would never be wrong to reject a claim using a multiple reference argument even if the articles are in the same conference proceedings.  And the applicants argument should address the rejection made by the examiner.
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Isaac

NJ Patent1

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jdd:  Agreed, the preprint / proceedings could be considered a single volume or work.  Consider technical journals such as JACS, IEEE Journal, Nature Reviews.  They arrive as a single volume (issue) too, and per Isaac, there is no problem citing to different articles in the same issue to make an obviousness argument. 

To be an anticipating reference, a single volume must disclose all of the elements arranged as required by the claim, right?.  If you have to go “shopping” through all of the papers in the volume/issue to find and cobble-together all of the elements, IMO it is unlikely (but not impossible)that the “arrangement” requirement would be met.  Go with your best obviousness argument.  IMO the "single reference" concern may be a red herring. Which may explain why it's hard to find a citation on point.   
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