Memo: The “All-Elements Rule” | jdickins | July 23, 2012

H2O

Memo: The “All-Elements Rule”

Assume these facts: On January 1, 2010 Steve comes up with a recipe for soup, comprising a mixture of
tomatoes onions pepperoni Swiss chard egg whites black olives
all mixed together in specific proportions. He applies for a patent on June 1, 2010 (for his “composition of matter”). Assume there are only two relevant prior art “references”: Reference 1 is a kind of soup, made and sold by the Campbell’s Soup Company since 1991 under the name “Italian Vegetable Soup,” which contains tomatoes, onions, Swiss chard, and egg whites. Reference 2 is a US patent , issued in 2004, for a new kind of soup consisting of tomatoes, pepperoni, egg whites, bread crumbs, chocolate, goat cheese, and arugula. Question: Based on these facts and only these facts, is Steve barred from obtaining a patent under section 102? Answer: No, he is not barred. “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” In re Paulsen. But here, no single prior art reference discloses each and every limitation of the claimed invention. Reference 1 does not disclose the use of pepperoni or black olives (which are both elements/limitations of Steve’s claimed invention), and Reference 2 does not disclose the use of onions, Swiss chard, egg whites, or black olives. Therefore, there is no anticipation (and no bar to patentability of Steve’s soup). Steve’s invention, on these facts, has not previously been in public use or on sale or patented, because the soups disclosed in these two references must contain each and every limitation of Steve’s claimed invention in order to “count” for purposes of sec. 102(a) or (b). New Fact: Assume a third prior art reference comes to light: a soup described in a book of recipes published in 1988 consisting of tomatoes, onions, Swiss chard, egg whites, pepperoni, bread crumbs, chocolate, black olives, goat cheese, and arugula. Question, is Steve barred from obtaining a patent under §102? Answer: Yes, he is, because this single reference (from the 1988 recipe book) contains each and every element of his claimed invention (in addition to other elements), and was in the public prior art prior to Steve’s invention date. It seems much too simple-minded to be correct – but it is correct. Try not to over-complicate this analysis.
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June 14, 2013

Professor David Post

2012-07-22

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