Anticipate This!™ | Patent and Trademark Law Blog

A Species of the Anticipation Genus.

Posted in Practice Commentary by Jake Ward on May 26, 2006

We have generally considered (and would wager than most practitioners also consider) anticipation to be a rather black-and-white issue.  This is especially true when compared to the subjective obviousness analysis.  The anticipation analysis is simply whether a cited prior art reference discloses each and every limitation of the claimed invention, explicitly or inherently?  Therefore, aside from inherency issues, the test for anticipation is fairly objective, i.e. are all the elements disclosed or not?

However, under a particular set of circumstances the analysis can turn very subjective.  These circumstances are known as genus-species situations. See MPEP 2131.02.  In genus-species situations, a prior art species will always anticipate a genus.  In stark contrast, however, a genus does not always anticipate a species within a genus. 

The latter situation can arise, in particular, in chemical cases where one or more R groups are disclosed for a genus compound in the prior art, and the claimed invention is a particular sub-genus or species of the prior art genus.The modern standard for whether such a genus anticipates a claimed species was described more than 40 years ago in the CCPA decision of In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962). In this case, the prior art disclosed a chemical genus having a limited number of substituent groups that represented either hydrogen or alkyl radicals, and an R group containing an OH group.  The reference also disclosed a subgenus with preferred substituents for each group.  The court held that the subgenus, containing only 20 compounds and a limited number of variations in the generic chemical formula, inherently anticipated a claimed species within the genus because “one skilled in [the] art would… envisage each member” of the genus.  Thus, a genus anticipates a species if one of ordinary skill in the art is able to “at once envisage” the species compound within the chemical formula of the genus compound. 

Under these particular circumstances, the anticipation analysis becomes significantly more subjective than pracitioners are used to.  First, there is the injection of patent law’s “reasonably prudent person” analog, “the person having ordinary skill in the art,” into the standard.  Second, the question of whether this person is able to “at once envisage” the species is no less subjective.  For these reasons, this species of anticipation is distinguishable from conventional questions of anticipation, and practitioners should be aware that the analysis is very different indeed.

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