02/04/2019

Rebutting §102-rejections under Net MoneyIN v. VeriSign, as illustrated by opinions from the Patent Trial and Appeal Board (PTAB)


Rebutting §102-rejections under Net MoneyIN v. VeriSign, as illustrated by opinions from the Patent Trial and Appeal Board (PTAB)

Tom Brody

Net MoneyIN (Fed. Cir. 2008) is one of the few Federal Circuit cases available that relate to anticipation (35 U.S.C. § 102). Fortunately, opinions from the Patent Trial and Appeal Board (PTAB) provide a family of fact-patterns, where these opinions demonstrate that Net MoneyIN can be applied to a variety of situations that are much greater than the facts of the Federal Circuit case. Net MoneyIN has been successfully applied in cases before the Board, to compel the Board to reverse in the following situations. These situations include: (1) The prior art reference identifies two or more of the claim elements in two or more distinct locations, e.g., in Example One and Example Two, in Figure 1 and Figure 2, or in Example One and in the background information of the prior art reference; (2) Anticipation rejection based on “picking and choosing” a claim element from a disclosure in the prior art reference, where the disclosure takes the form of a long list of chemicals or other substances; (3) Where the arrangement of parts (structures) in the prior art device is different from the arrangement of corresponding parts that is required by the claim; (4) Where the examiner, in imposing a §102 rejection, had invoked a doctrine that belongs not to the anticipation inquiry, but instead to the obviousness inquiry. This article is a manual that provides the practitioner with tools for rebutting §102-rejections that go far beyond those provided by Verdegaal Bros. v. Union Oil Co. of California (Fed. Cir. 1987). Regarding the situation where the arrangement of parts are different, it is useful to remember that there exist at least three types of claim elements – structural elements, functional elements, and elements that describe arrangements of structures.

100 J. Pat. & Trademark Off. Soc’y 388(2018)

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