You passed § 101. Your invention is patent-eligible subject matter with credible utility. Congratulations—you made it through the first gate.
Now comes the second question: Is your invention actually NEW?
This is 35 U.S.C. § 102—the novelty requirement. It asks whether someone else already disclosed your exact invention before you filed your patent application.
If the answer is yes—if every element of your claimed invention appears in a single prior art reference—your invention is anticipated. It lacks novelty. It fails § 102.
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This is the America Invents Act (AIA) version of § 102, effective March 16, 2013. It fundamentally changed how U.S. patent law determines novelty.
Before the AIA (pre-March 16, 2013), U.S. patent law operated on a first-to-invent system. The person who could prove they invented first—even if they filed their application later—could win the patent.
The AIA changed this to first-to-file. Now, the first person to file a patent application (with some exceptions) gets the patent rights, regardless of who actually invented first.
| Pre-AIA (Before March 16, 2013) | AIA (After March 16, 2013) | |
|---|---|---|
| System | First-to-Invent | First-to-File |
| Who wins? | Person who invented first (with proof) | Person who filed application first |
| Critical date | Date of invention (conception + reduction to practice) | Effective filing date of application |
| Prior art cutoff | One year before filing (grace period for inventor's own disclosure) | Before effective filing date (with limited exceptions) |
| Geographic scope | U.S.-centric (foreign patents/publications counted, but not foreign public use) | Worldwide (anything "available to the public" anywhere counts as prior art) |
Key implications of the AIA change:
📖 Margin Story: Zara Learns the Race
"Before the Treaty of 2013," Severen explained, "patent rights went to whoever invented first—even if they filed their application later. Inventors could prove they conceived the idea earlier and win priority."
Zara frowned. "That sounds fair. The true inventor should get the patent."
"Fair, perhaps. But impossible to administer. How do you prove when an idea formed in someone's mind? Lab notebooks? Witness testimony? The system drowned in interference proceedings—legal battles to determine who invented first."
"So they changed it."
"To first-to-file. Now, the filing date is everything. If two inventors apply for the same invention, whoever filed first wins—regardless of who actually invented it first." His sapphire eyes gleamed. "It's not about fairness. It's about certainty."
Zara felt the flames pulse in her chest. "And if I delay filing because I'm perfecting the invention—"
"Someone else files first, and you lose. The race isn't to create the best invention. It's to file the application fastest."
Section 102(a)(1) defines what counts as prior art—the universe of disclosures that can anticipate your claimed invention.
A person shall be entitled to a patent unless the claimed invention was:
before the effective filing date of the claimed invention.
This is public prior art—disclosures that were accessible to the public before your filing date.
Any issued patent anywhere in the world that issued before your effective filing date counts as prior art.
Example: A Japanese patent issued on January 1, 2020, disclosing your exact invention, is prior art against your U.S. application filed March 1, 2020.
Any printed publication that was publicly accessible before your effective filing date counts as prior art.
Key requirement: The publication must have been publicly accessible—meaning a person of ordinary skill could locate it with reasonable diligence. See In re Hall, 781 F.2d 897 (Fed. Cir. 1986).
Counts as prior art:
Does NOT count as prior art:
Any public use of the invention before your effective filing date counts as prior art—even if not documented in writing.
Key point: The use must be public, not secret. If the invention was used internally by a company but not disclosed to the public, it may not qualify. See Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946).
Any commercial offer for sale or actual sale of the invention before your effective filing date counts as prior art.
On-sale bar test: (1) The invention was the subject of a commercial offer for sale, AND (2) the invention was ready for patenting (either reduced to practice or sufficiently detailed drawings/specifications). See Pfaff v. Wells Electronics, 525 U.S. 55 (1998).
This is the catchall category—anything that made the invention available to the public in any manner, anywhere in the world.
Critical change under AIA: This language expands prior art to include any form of public disclosure, not just the specific categories listed. Worldwide scope applies.
📖 Margin Story: The Worldwide Net
"Before the Treaty, only certain foreign disclosures counted as prior art," Severen said. "A patent in Japan? Yes. A publication in China? Yes. But a public demonstration in Germany? No—unless it was documented."
Zara studied the statute text. "'Otherwise available to the public'—that changed everything."
"Everything. Now, if someone demonstrates your invention at a trade show in Singapore, or posts a video on YouTube from Australia, or presents at a conference in France—" He gestured broadly. "—it's prior art. Anywhere. Any format. As long as it was publicly accessible."
"The whole world is the prior art database."
"Exactly. Which means before filing, you must search not just U.S. patents—but worldwide publications, products, demonstrations, anything that might have disclosed your invention." His sapphire eyes gleamed. "The net is vast. And it catches everything."
Section 102(a)(2) covers a special category: secret prior art—earlier-filed patent applications that weren't public when you filed, but that eventually published or issued.
A person shall be entitled to a patent unless the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
What this means:
Example scenario:
Result:
Inventor A's application is prior art against your application under § 102(a)(2)—even though it was secret on your filing date (March 1). What matters is that (1) it was filed before your filing date, and (2) it eventually published.
Why this rule exists:
The USPTO shouldn't grant two patents on the same invention. Inventor A filed first and will eventually disclose Widget X to the public (via publication). You filed second. First-to-file wins.
| § 102(a)(1) - Public Prior Art | § 102(a)(2) - Secret Prior Art | |
|---|---|---|
| Timing | Publicly available before your filing date | Filed before your filing date, published/issued after |
| Visibility | Was public when you filed (you could have found it) | Was secret when you filed (you couldn't have known) |
| What counts | Patents, publications, public use, on sale, otherwise available | Only U.S. patents and published applications |
| Geographic scope | Worldwide | U.S. only (filed in USPTO or claiming benefit) |
| § 102(b)(1) exception? | Yes—inventor's own disclosure within 1 year may not count | No—no exceptions (different inventor's filing always counts) |
Notice the key phrase: "names another inventor."
This means § 102(a)(2) only applies if the earlier-filed application names a different inventor than your application.
📖 Margin Story: The Invisible Wall
"This is the cruelest rejection," Severen said quietly. "Someone filed before you. You couldn't have known—their application was secret, sealed in the archives. You invented independently, filed in good faith."
Zara frowned. "And then their application publishes—"
"Eighteen months after they filed. Which might be months or years after you filed. Suddenly, their disclosure becomes prior art. Retroactively. Your application is anticipated by something that didn't exist publicly when you filed."
"That's not fair."
"It's first-to-file," Severen said. "They filed first. They win. The fact that you couldn't have known doesn't matter. The system rewards speed, not fairness." His sapphire eyes gleamed. "Which is why you file immediately when you have an invention. Every day you delay is a day someone else might file first—and you'll never know until it's too late."
You just learned that virtually any public disclosure before your filing date can be prior art. That sounds brutal—and it is.
But § 102(b) provides critical exceptions—situations where a disclosure that would normally be prior art doesn't count against you.
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—
A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Let's break down these exceptions carefully. They can save your application when prior art threatens to kill it.
The basic rule: If you (the inventor) publicly disclose your own invention, that disclosure won't count as prior art against you—as long as you file within one year.
Scenario:
Analysis:
Normally, your own publication would be § 102(a)(1) prior art (printed publication before filing date). BUT § 102(b)(1)(A) saves you:
Result: Your application can proceed. The grace period protected you.
§ 102(b)(1)(A) applies to disclosures made by:
Protected disclosures:
NOT protected:
Critical rule: You must file within one year of your public disclosure. If you wait even one day past the one-year mark, the grace period doesn't apply—your own disclosure becomes prior art.
Timeline:
Result:
❌ Your publication is § 102(a)(1) prior art. The grace period expired on December 31, 2020. You filed one day too late. Your own publication anticipates your claims. Application rejected.
Lesson: Never rely on the full year. File immediately. Grace periods are emergency protection, not a planning tool.
This subsection handles a more complex scenario: What if you disclose first, then someone else discloses the same invention, and then you file?
Timeline:
Question: Is the third party's March 1 publication prior art against you?
Analysis:
Result: Both disclosures are disqualified from being prior art. You can still get a patent (if you file within 1 year of YOUR disclosure).
Why this rule exists: If you publicly disclose first, you've made the invention available to the public. If someone else later discloses the same thing, they're not adding anything new—it was already public because of you. So their disclosure shouldn't block your patent.
📖 Margin Story: The Grace Period Gamble
"Some inventors," Severen said, "rely on the grace period as a strategy. Publish first, get feedback, refine the invention, then file within the year."
Zara frowned. "That sounds smart. Test the market before paying filing fees."
"It sounds smart until someone else files first." His sapphire eyes gleamed. "Remember § 102(a)(2)? If a third party files their application after your publication but before your filing, and their application later publishes—"
"Their earlier filing date wins under first-to-file," Zara finished. "Even though I disclosed first."
"Exactly. The grace period protects you from your own disclosure under § 102(a)(1). It does NOT protect you from someone else filing before you under § 102(a)(2)." He paused. "Publish if you must. But file immediately after. Every day of delay is risk."
The flames in her palm pulsed. "The grace period isn't safety. It's a gamble."
"And the house always wins eventually."
This is the exception that matters most in corporate patent practice: What happens when two employees of the same company file separate patent applications on related inventions?
Normally, under § 102(a)(2), an earlier-filed application by a different inventor would be prior art. But § 102(b)(2)(C) creates an exception for commonly owned applications.
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Requirements for § 102(b)(2)(C) exception:
Scenario:
Question: Is Application #1 prior art against Application #2 under § 102(a)(2)?
Analysis:
Result: Both applications can proceed. TechCorp may get patents on both (or consolidate them).
When claiming the § 102(b)(2)(C) exception, you must prove common ownership existed as of your filing date. This typically requires:
Typical response to § 102(a)(2) rejection based on commonly-owned application:
"Applicant respectfully submits that the cited reference (U.S. Patent Application Publication No. 2020/XXXXXX to Inventor A) is not prior art under 35 U.S.C. § 102(b)(2)(C).
As demonstrated by the attached 37 C.F.R. § 1.130 Declaration and supporting exhibits:
The cited reference is therefore disqualified from being prior art under § 102(b)(2)(C). The rejection should be withdrawn."
Important limitation: Common ownership must exist as of your filing date. If ownership changes after you file, it doesn't matter.
Timeline:
Question: Can TechCorp claim § 102(b)(2)(C) exception?
Analysis:
Result: Application #1 is prior art against Application #2. TechCorp's later acquisition doesn't fix the problem.
📖 Margin Story: Corporate Patent Strategy
"Why does TechCorp file so many applications?" Zara asked, studying the company's patent portfolio. "They have three patents on nearly identical inventions."
Severen smiled. "Because they employ fifty engineers, all working on related problems. Engineer A files for Widget X. Engineer B, working independently, invents Widget X Plus. Engineer C invents Widget X Ultra."
"Without § 102(b)(2)(C), their own applications would kill each other."
"Exactly. Common ownership lets them file aggressively without their applications becoming prior art against each other. It's why employment contracts always include 'obligation to assign'—not just to own the invention, but to trigger § 102(b)(2)(C) protection."
Zara's flames pulsed. "And if the company acquired rights after filing?"
"Too late. The ownership had to exist as of filing. Which is why companies do due diligence—check all existing applications before filing new ones, verify employment agreements are signed, ensure common ownership is documented." His sapphire eyes gleamed. "Corporate patent strategy is 50% invention, 50% ownership choreography."
Now that you understand what counts as prior art and what exceptions apply, let's talk about anticipation—the test for whether prior art actually defeats your claim.
Anticipation rule: A claim is anticipated (lacks novelty) if every element of the claim appears in a single prior art reference, either expressly or inherently, arranged in the same way.
Every single element of your claim must appear in the prior art reference. If even one element is missing, there is no anticipation.
Your claim:
"A widget comprising: (A) a base, (B) a rotating arm attached to the base, (C) a spring connecting the arm to the base, and (D) a locking mechanism preventing rotation."
Prior art reference:
Describes a widget with (A) base, (B) rotating arm, and (C) spring. Does NOT mention locking mechanism.
Result:
✅ NOT anticipated. Element (D)—locking mechanism—is missing from prior art. All elements test fails. Your claim has novelty over this reference.
Note: The reference might still be used for obviousness under § 103 (combine with another reference teaching locking mechanisms). But it doesn't anticipate under § 102.
All elements must appear in a single prior art reference. You cannot combine multiple references to show anticipation—that's obviousness (§ 103), not anticipation (§ 102).
Your claim:
"A method comprising: (1) heating mixture to 200°C, (2) adding catalyst X, and (3) cooling to 50°C."
Prior art:
Can examiner combine A + B to show anticipation?
❌ NO. Anticipation requires single reference. Neither A nor B alone discloses all three steps.
Result:
✅ Claim is NOT anticipated. (But examiner might make obviousness rejection combining A + B under § 103.)
An element can be disclosed expressly (explicitly stated) or inherently (necessarily present even if not mentioned).
Inherency doctrine: If a prior art reference inherently discloses an element—meaning the element is necessarily present even though not explicitly described—the element is still disclosed for anticipation purposes.
See In re Robertson, 169 F.3d 743 (Fed. Cir. 1999): "Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates."
When inherency applies:
Your claim:
"A pharmaceutical composition comprising Compound X, wherein Compound X has a melting point of 150°C."
Prior art reference:
Describes Compound X (same molecular formula, same synthesis). Does NOT mention melting point.
Analysis:
Compound X has a specific molecular structure. That structure necessarily has a specific melting point—it's an inherent property of the compound. Even though the prior art doesn't measure or report the melting point, the compound has that melting point.
Result:
✅ Anticipated by inherency. The 150°C melting point is inherently disclosed—it's a property the prior art compound necessarily possesses, even if not recognized.
Your claim:
"A method of purifying water comprising: filtering water through activated carbon, wherein the method reduces chlorine levels by at least 90%."
Prior art reference:
Teaches filtering water through activated carbon using same filter design, same contact time. Does NOT mention chlorine reduction percentage.
Analysis:
Activated carbon filtration with the same parameters necessarily achieves the same chlorine reduction. Even if prior art doesn't measure or report the reduction percentage, the process inherently produces that result.
Result:
✅ Anticipated by inherency. The 90% reduction is an inherent result of the prior art method.
Important: Inherency is NOT the same as obviousness.
Scenario: Prior art teaches heating polymer to 200°C
| Your claimed element | Analysis | Rejection type |
|---|---|---|
| "...wherein the polymer melts" | Polymer necessarily melts at 200°C (its melting point). Inherent result. | § 102 anticipation (inherency) |
| "...further comprising adding colorant" | Adding colorant is NOT inherent—it's an optional modification someone might make. | § 103 obviousness (if obvious to add) |
📖 Margin Story: What Lies Beneath
"Inherency," Severen said, "is what exists whether or not anyone sees it. The wolf's tooth is sharp—that's inherent. Whether the wolf knows its tooth is sharp is irrelevant."
Zara held flame in her palm. "This fire has temperature. Even if I don't measure it, the temperature exists."
"Exactly. If prior art describes making the same fire using the same fuel and oxygen, that fire necessarily has the same temperature—whether or not the prior art mentions temperature." His sapphire eyes gleamed. "You can't claim novelty based on merely recognizing what was already there."
She closed her fist, flames disappearing. "But if I claimed a method of controlling the temperature—"
"Now you're claiming something new. Temperature exists inherently. Control is your invention." He smiled. "That's the line between § 102 and patentability. Not discovering what exists—but inventing what to do with it."
Understanding how examiners construct § 102 rejections helps you recognize them instantly and craft precise responses.
Step 1: Identify the prior art reference
Step 2: Map claim elements to prior art disclosure
Step 3: State the rejection
Your claim 1:
"A beverage container comprising: (a) a cylindrical body, (b) a lid attached to the body, (c) a straw extending through the lid into the body, and (d) a handle attached to the side of the body."
Examiner's rejection:
Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Smith (U.S. Patent No. 1,234,567, issued January 1, 2019).
Regarding claim 1:
All elements of claim 1 are expressly disclosed in Smith. The claimed container is identical to Smith's beverage container. Smith is prior art under § 102(a)(1) as it issued (January 1, 2019) before the effective filing date of the present application (March 1, 2020). A prima facie case of anticipation is established.
Watch for these patterns in novelty rejections:
📖 Margin Story: Reading the Rejection
"When you receive a § 102 rejection," Severen said, handing Zara a mock Office Action, "the examiner's job is to map. Element by element. Reference section by reference section."
Zara studied the rejection. "Element (a) disclosed at col. 2, lines 10-15. Element (b) disclosed at Fig. 3. Element (c)—" She paused. "—disclosed 'inherently' because the structure necessarily performs that function."
"That's your attack point," Severen said, pointing to the inherency claim. "The examiner didn't quote text. Didn't cite a figure. Just claimed it's inherent. Your response: 'Examiner has not shown element (c) is NECESSARILY present. Mere possibility is insufficient. See In re Robertson.'"
The flames flickered in Zara's palm. "Find the weak mapping. Challenge the gap."
"Exactly. Every rejection is a map. Your job is to find where the map fails."
Once you understand how the rejection is structured, you can systematically dismantle it.
Goal: Prove the cited reference doesn't qualify as prior art under § 102(a)(1) or § 102(a)(2).
When to use:
Rejection: Claim 1 rejected under § 102(a)(1) as anticipated by Smith publication dated June 1, 2020.
Your filing date: March 1, 2020
Response:
"Applicant respectfully traverses the rejection. The cited Smith reference (dated June 1, 2020) is not prior art under 35 U.S.C. § 102(a)(1).
Section 102(a)(1) requires that prior art be available to the public before the effective filing date of the claimed invention. The effective filing date of the present application is March 1, 2020 (filing date of parent application Serial No. [XXX], to which priority is claimed under § 120).
Smith was published on June 1, 2020—three months after Applicant's effective filing date. Therefore, Smith is not prior art under § 102(a)(1), and the rejection is withdrawn."
Goal: Prove that at least one claim element is NOT disclosed in the prior art reference.
How to execute:
Your claim:
"A widget comprising: (a) base, (b) rotating arm, (c) spring, and (d) locking mechanism preventing arm rotation."
Examiner mapped: Elements (a), (b), (c) to Smith. Claims element (d) is "inherently present" because "any rotating mechanism could be locked."
Response:
"Applicant respectfully traverses the rejection. Claim 1 is not anticipated by Smith because element (d)—locking mechanism—is not disclosed, expressly or inherently.
Smith does not disclose element (d): Smith describes a freely rotating arm with no mention of any locking, stopping, or prevention mechanism (see Smith, col. 2, lines 10-30; Figs. 1-3). The arm rotates continuously during operation.
Element (d) is not inherent: Examiner argues that 'any rotating mechanism could be locked.' However, inherency requires that the element be necessarily present, not merely possible. See In re Robertson, 169 F.3d 743 (Fed. Cir. 1999). Smith's rotating arm does not necessarily include a locking mechanism—it operates without one.
Because element (d) is absent from Smith, the all-elements test fails. Claim 1 is not anticipated."
Goal: Force examiner to prove an allegedly "inherent" element is NECESSARILY present, not just possibly or probably present.
Burden-shifting:
Your claim:
"A method of treating water comprising filtering through activated carbon, wherein the method reduces bacterial count by at least 99%."
Examiner's position: Smith teaches activated carbon filtration. The 99% bacterial reduction is "inherently achieved."
Response:
"Applicant respectfully traverses the inherency finding. Examiner has not established that 99% bacterial reduction is necessarily achieved by Smith's method.
Smith's disclosure: Smith teaches filtering water through activated carbon (col. 3, lines 10-15). Smith does NOT disclose filter pore size, contact time, flow rate, or carbon activation level—all parameters that affect bacterial reduction.
Inherency requires necessity: Under In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999), inherency requires that 'the limitation at issue necessarily must be present' in the prior art. Examiner's position is that bacterial reduction could reach 99%—not that it necessarily does.
Evidence of variability: Applicant submits Declaration under 37 C.F.R. § 1.132 from Dr. [Expert], showing that activated carbon filtration achieves bacterial reduction ranging from 60% to 99.9% depending on parameters. Smith's unspecified parameters do not necessarily produce 99% reduction.
Because Examiner has not shown the 99% reduction is necessarily inherent, the rejection must be withdrawn."
Goal: Show that even if all elements are present, they're arranged or combined differently than in the prior art.
When to use:
Your claim:
"A circuit comprising: transistor A connected in series with resistor B, wherein resistor B is connected to ground."
Prior art (Smith): Discloses transistor A and resistor B, but shows them connected in parallel, not series.
Response:
"Applicant respectfully traverses the rejection. While Smith discloses transistor A and resistor B, Smith does NOT disclose these components arranged in series as required by the claim.
Smith's Fig. 2 clearly shows transistor A and resistor B connected in parallel, not series (Smith, col. 4, lines 5-10). The claimed series arrangement produces different electrical behavior (current flows through both components sequentially) compared to Smith's parallel arrangement (current splits between components).
Anticipation requires that all elements be present in the same arrangement. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). Smith's different arrangement does not anticipate."
Goal: Add a feature from the specification that distinguishes over the prior art.
Requirements:
Original claim 1:
"A beverage container comprising: a body, a lid, and a straw."
Prior art (Smith): Discloses body, lid, and straw (all elements present → anticipation).
Amended claim 1:
"A beverage container comprising: a body, a lid, a collapsible straw that folds into the lid when not in use."
Amendment remarks:
"Claim 1 has been amended to recite 'a collapsible straw that folds into the lid when not in use,' which is disclosed and enabled in the specification at page 8, lines 10-20, and Fig. 4.
Smith discloses a rigid, non-collapsible straw (Smith, col. 3, line 15: 'straw 30 is a fixed-length rigid tube'). Smith does not teach or suggest a collapsible straw that folds into the lid.
Amended claim 1 is now distinguished from Smith and no longer anticipated."
Best practice: Use multiple strategies simultaneously. Don't rely on a single argument.
"Applicant respectfully traverses the rejection on multiple grounds:
1. Primary argument - Missing element: Smith does not disclose element (d) (locking mechanism), expressly or inherently. [Detailed analysis showing Smith is silent on locking...]
2. Alternative argument - Challenge inherency: Even if Examiner maintains element (d) is inherent, Examiner has not shown it is necessarily present. [Evidence showing locking is optional, not inevitable...]
3. Claim amendment: Out of an abundance of caution, Applicant has amended claim 1 to recite 'a spring-loaded locking mechanism that automatically engages when arm reaches 90° rotation.' [Show Smith doesn't disclose this specific feature...]
For these reasons, the rejection should be withdrawn."
📖 Margin Story: The Five Walls
Severen handed Zara five stones. "Each stone is a defense against § 102 rejections. You can use one. Or you can use all five."
"Challenge prior art status," Zara said, holding the first stone. "Show it's not actually prior art—wrong date, grace period, common ownership."
"Second?"
"Show missing element—break the all-elements test. One missing element, no anticipation."
"Third?"
"Challenge inherency—force examiner to prove necessity, not possibility."
"Fourth?"
"Distinguish arrangement—elements present but combined differently."
"And fifth?"
"Amend the claim—add something the prior art doesn't have." She arranged all five stones in a wall. "And if I'm smart, I use all five at once. Primary argument, alternative arguments, amendment as backup."
Severen's sapphire eyes gleamed. "Now you think like a patent prosecutor. Don't give the examiner one target to shoot at. Give them five walls to breach."
Certain patterns repeat across thousands of novelty rejections. Recognize them instantly:
Pattern: You claim a product. Prior art sold the identical product before your filing date.
Example: Claim 1 recites "A widget comprising parts A, B, C." Examiner cites competitor's product catalog from 2019 showing widget with parts A, B, C. Your filing date: 2020.
How to overcome:
Pattern: You claim a method. Academic paper published before your filing describes same steps.
Example: Claim 1: "Method comprising steps X, Y, Z." Prior art paper: "We performed steps X, Y, Z and observed result R."
How to overcome:
Pattern: Your claim is broad (genus). Prior art discloses narrow example (species).
Example: Claim 1: "Polymer selected from polyethylene, polypropylene, and polyvinyl chloride." Prior art: "We used polyethylene."
Rule: Species anticipates genus. If prior art discloses ONE member of your claimed group, it anticipates.
How to overcome:
Pattern: Examiner uses YOUR provisional application (if it published) as prior art against your non-provisional.
How this happens:
How to overcome:
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END OF CHAPTER 4 - NOVELTY (§ 102)