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35 U.S. Code § 102 & 103: Anticipation and Obviousness

By Russell Pigg


Under 35 U.S. Code § 102, a patent can be rejected when the invention is anticipated or “not novel” over a disclosure that is available as prior art previous to the effective filing date for the claimed invention.

The prior art does not need to be patented. A disclosure could be a previous patent or published patent application, description in a printed publication, or in public use, on sale or otherwise available.

If the information was readily available to the public and was published prior to the effective filing date to the claim, prior art exists. Only one reference is usable in the rejection of a claim for anticipation.

The Federal Circuit wrote in the 1987 case Verdegaal Bros. v. Union Oil Co. of California that “a claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference”(Verdegaal Bros., v. Union Oil Co. of Calif, 814 F.2d 628, 631 (Fed. Cir. 1987)).

To invalidate a patent by anticipation, a prior art reference needs to disclose each and every requirement of the claim.

However, “[w]hen a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art” (Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001)).  

In Titanium Metals Corporation v. Banner, the Federal Circuit wrote that “[w]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art” (Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)).

When existing knowledge reveals a range that intersects or coincides with the range claimed in a patent, but doesn’t provide specific instances within the claimed range, then an individualized assessment is required to determine if the invention lacks novelty.

In Atofina v. Great Lakes Chemical Corporation, the Federal Circuit held that the ranges only slightly overlap, no reasonable fact finder could determine whether this overlap describes the entire claimed range with “sufficient specificity” for anticipation (Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006)). What constitutes sufficient specificity is fact dependent and can vary case to case.

Furthermore, the concept of “inherent disclosure” was explained in the case of Schering Corp. v. Geneva Pharmaceuticals Inc., 339 F.3d 1373 (Fed. Cir. 2003). \

The court held that if a prior art reference discloses a method that, when followed, will inevitably produce the claimed invention, then the prior art inherently anticipates the claim.

Therefore, even if the prior art does not explicitly disclose the claimed invention, the prior art can still be considered as anticipating the claim if the result is a natural and inevitable outcome of the disclosed method.

In the case of In re Crish, 393 F.3d 1253 (Fed. Cir. 2004), the court further clarified the concept of inherent anticipation.

The Federal Circuit stated that the inherent anticipation requires recognition only in hindsight, and knowledge of the inherent disclosure is not required at the time of the prior art reference’s publication.

For design patents, in the 2008 case, Egyptian Goddess v. Swisa, the Federal Circuit Court created the “ordinary observer” test for anticipation (Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008)).

This test is based on the substantial visual similarity between the accused product and claimed design, so similar that an odinary observer would believe the two designs to be substantially the same.

This test was upheld just over a year later in International Seaway Trading v. Walgreens (International Seaway Trading v. Walgreens, 589 F.3d 1233 (Fed. Cir. 2009)). The Federal Circuit ruled that this is the proper and sole test for anticipation of design patents.


35 U.S. Code § 103 outlines that a patent for a claimed invention may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

There is a different standard of obviousness for design patents and utility patents.

 In 1982, the United States Court of Customs and Patent Appeals heard the case In re Rosen.

The court wrote that “there must be a reference, a something in existence the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness” (In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982)). 

This “basically the same” standard has been used for deciding whether a reference of prior art qualifies for obviousness of design patents. 

In the 1966 case, Graham v. John Deere, the Supreme Court outlined important considerations in regards to the obviousness standard of 103.

The obviousness inquiry requires consideration of the four Graham factors: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective indicia of nonobviousness, such as commercial success, long felt but unsolved needs, and failure of others (Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).

However, this case was for a utility patent. In the design patent context, the first three Graham factors are addressed by determining whether a designer of ordinary skill would have combined teachings of the prior art to create “the same overall visual appearance as the claimed design” (Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)).

 Using pieces from both Rosen and Graham, the Federal Circuit court created a two-step test for obviousness: (1) whether there is a single primary reference (a “Rosen reference”) with characteristics that are “basically the same” as the claimed design by discerning the visual impression of the design as a whole; and (2) if there is a Rosen reference, whether an ordinary designer would have modified the Rosen reference to create a design with the same overall visual appearance as the claimed design?

The test has commonly been referred to as the Rosen-Durling test and has been used for design patents since the Durling case.

In recent news, in the summer of 2023, the Federal Circuit decided to consider, en banc, whether the 2007 Supreme Court decision in KSR International Co. v. Teleflex Inc. overrules the decades long Rosen and During tests that the Federal Circuit has been using for design patents.

In the KSR case, the Supreme Court rejected the Federal Circuit’s “teaching, suggestion, motivation” test for obviousness (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). The Supreme Court held that the teaching, suggestion, motivation test was too narrow and rigid, and it conflicted with the broader obviousness evaluation established in Graham.

Justice Kennedy emphasized that the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim.

Instead, a court can take into account the inferences and creative steps that a person of ordinary skill in the art would employ.

KSR was an extension of the Graham decision from 41 years earlier.

This review comes as a result of a January 2023 Federal Circuit decision to uphold the Patent Trial and Appeal Board (PTAB) decision on a post-grant review of the U.S. Patent No. D855,508 S (the “’508 patent”).

LKQ Corporation and Keystone Automotive Industries, Inc. filed a petition for post-grant review of the sole claim of GM Global Technology Operations LLC’s ’508 patent for a vehicle front skid bar (LKQ Corp. v. GM Glob. Tech. Operations, 71 F.4th 1383 (Fed. Cir. 2023)).

PTAB used the Rosen-Durling test and found that that Petitioners had “not demonstrated by a preponderance of the evidence that the sole claim of the ’508 patent [wa]s anticipated or would have been unpatentable.”

The petitioners argued that the KSR decision overruled the Rosen-Durling test, and the PTAB decision must be vacated and remanded due to the use of such a test.

Now, as stated previously, the Federal Circuit sided with PTAB and chose to uphold the Rose-Durling test, stating that over fifty design patent cases have been decided since KSR and not once has KSR been used.

The petitioners filed for a rehearing, en banc, which was granted. Now, the Federal Circuit will decide whether the Rosen-Durling test was overruled by KSR and if a new test is needed for obviousness of design patents.


2131-Anticipation — Application of 35 U.S.C. 102 (uspto.gov) (https://www.uspto.gov/web/offices/pac/mpep/s2131.html)

2141-Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 (uspto.gov) (https://www.uspto.gov/web/offices/pac/mpep/s2141.html)

What to Know About KSR Extending to Design Patents (natlawreview.com)


'Obvious Over What?' LKQ’s En Banc Petition Threatens to Turn Test for Design Patent Obviousness on its Head (ipwatchdog.com) (https://ipwatchdog.com/2023/05/16/obvious-over-what-lkqs-en-banc-petition-threatens-to-turn-test-for-design-patent-obviousness-on-its-head/id=160846/)