2126.02 Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When the Reference Is a "Patent" but Not a "Publication" [R-11.2013]
OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION CAN BE RELIED ON EVEN IF PATENT IS SECRET
When the patented document is used as a patent and not as a publication, the examiner is not restricted to the information conveyed by the patent claims but may use any information provided in the specification which relates to the subject matter of the patented claims when making a rejection under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a), (b) or (d). Ex parte Ovist, 152 USPQ 709, 710 (Bd. App. 1963) (The claim of an Italian patent was generic and thus embraced the species disclosed in the examples, the Board added that the entire specification was germane to the claimed invention and upheld the examiner’s pre-AIA 35 U.S.C. 102(b) rejection.); In re Kathawala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993) (The claims at issue were rejected under pre-AIA 35 U.S.C. 102(d) by applicant’s own parent applications in Greece and Spain. The applicant argued that the "invention... patented in Spain was not the same ‘invention’ claimed in the U.S. application because the Spanish patent claimed processes for making [compounds for inhibition of cholesterol biosynthesis] and claims 1 and 2 were directed to the compounds themselves." Id. at 944, 28 USPQ2d at 1786. The Federal Circuit held that "when an applicant files a foreign application fully disclosing his invention and having the potential to claim his invention in a number of ways, the reference in section 102(d) to ‘invention... patented’ necessarily includes all disclosed aspects of the invention." Id. at 945-46, 28 USPQ2d at 1789.).
Note that In re Fuge, 272 F.2d 954, 957, 124 USPQ 105, 107 (CCPA 1959), does not conflict with the above decisions. This decision simply states "that, at the least, the scope of the patent embraces everything included in the [claim]." (emphasis added).
The courts have interpreted the phrase "invention... patented" in pre-AIA 35 U.S.C. 102(a), (b), and (d) the same way and have cited decisions without regard to which of these subsections of pre-AIA 35 U.S.C. 102 was at issue in the particular case at hand. Therefore, it does not seem to matter to which subsection of pre-AIA 35 U.S.C. 102 the cases are directed; the court decisions are interchangeable as to this issue.