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In its opinion the Court discusses earlier wire fence construction that, though somewhat similar to Glidden’s, did not “anticipate” the Glidden invention. “Anticipate” is a term of art in patent law. In order for a device in the prior art to anticipate, and so defeat novelty, the prior art reference needs to contain each and every element of the invention claimed by the patent applicant. The degree of similarity required must be essentially complete. If an applicant for a patent is claiming “a device consisting of parts A, B and C ” and the prior art contains two devices, one consisting of an A and a B, and another consisting of parts A, C, and D, neither of the prior art references anticipates the claimed device, and it is not permissible to combine them.

Above is a quote from my textbook. I am confused about the parts in bold and am not sure what it is trying to say. I think it is trying to say that the patent for "a device consisting of parts A,B and C" is novel and therefore ok because it was not anticipated by a previous patent. And the reason why it wasn't anticipated in the previous patent is because.........

And that is where I get lost. Is it saying that the previous patent must have a diagram of a single device containing ALL the same elements as the new patent does in order to anticipate it?

bonus question: What if the previous patent had a diagram for a device with components "A,B,C, and D"? I take it that the inclusion of D does not prevent anticipation. Right?

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Your interpretation is mostly correct on both points. The previous patent would need to disclose a device with A, B, and C in order to anticipate the claim of the present application. A diagram showing a device with all 3 elements would be sufficient, but so would any other disclosure (e.g., a written description) of a device with all 3 elements. If it had a diagram (or, again, any other disclosure) of a device with A, B, C, and D, then it would also anticipate the present claim--you are correct that the inclusion of D does not prevent anticipation.

However, it is important to note that this alone does not make the present claim valid. Novelty (lack of anticipation) is only one test that the claim must pass. The claim must also be non-obvious to be valid (a topic likely explained in an upcoming section of your textbook).

  • Thanks! I just wanted to confirm really quick that non-obviousness, usefulness, novelty, and falling within a specified subject matter category are the four requirements of patentability. Let me know if you agree. Regardless, you have answered my question. – S J Dec 19 '18 at 20:41
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First, the issue isn't what information is in a previous patent, but what information in any printed publication ever made anywhere in any language with some caveats, prior to the priority date of the application in question. Novel means new, anticipated means it has been done (or written about) before and is therefore not novel/new. For something to show that an invention - in the form of the proposed claim wording - isn't new, the whole same thing as being claimed needs to be found in a reference. If you find information spread across two or more references that one might put together to get to the claimed invention, that is an obviousness argument, not anticipation. Even if the two or more things being put together to reach the present invention are in a single document, it is still a matter of obviousness unless the document spells out the combining of the two things. Yes, a reference explaining A, B, C and D is anticipating because it has an A, a B, and a C. Of course just having a spring (A) a gear (B) and a button(C) doesn't anticipate all inventions that might have those three components. Claims also state the relationship/interconnection of the elements.

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